Petition for IPR of U.S. 9,454,748
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`Paper No. 1
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UBER TECHNOLOGIES, INC. and
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`CHOICE HOTELS INTERNATIONAL, INC.
`
`Petitioners
`
`v.
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`FALL LINE PATENTS, LLC.
`
`Patent Owner
`
`------------------------
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`Case: IPR2018-00535
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`Patent 9,454,748
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`------------------------
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`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,454,748
`
`i
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`Instacart, Ex. 1025
`
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`Paper No. 1
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UBER TECHNOLOGIES, INC. and
`
`CHOICE HOTELS INTERNATIONAL, INC.
`
`Petitioners
`
`v.
`
`FALL LINE PATENTS, LLC.
`
`Patent Owner
`
`------------------------
`
`Case: IPR2018-00535
`
`Patent 9,454,748
`
`------------------------
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,454,748
`
`i
`
`Instacart, Ex. 1025
`
`
`
`
`
`Petition for IPR of U.S. 9,454,748
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`TABLE OF CONTENTS
`
`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED (37
`I.
`C.F.R. § 42.22(A))
`1
`II. MANDATORY NOTICES
`1
`A. Real Parties-in-Interest
`1
`B. Related Matters
`1
`C. Lead and back-up counsel
`3
`D. Service Information
`4
`III. CERTIFICATION OF GROUNDS FOR STANDING
`4
`IV. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`4
`A. GROUND 1: Claims 1, 9, 11, 13, and 15-22 are obvious under § 103(a)
`over U.S. Patent No. 6,961,586 to Barbosa et al. (“Barbosa”) (Ex. 1002) alone in
`view of the knowledge of a person of ordinary skill in the art.
`4
`B. GROUND 2: Claims 1, 9, 11, 13, and 15-22 are obvious under § 103(a)
`over Barbosa (Ex. 1002) in view of U.S. Patent No. 6,332,127 to Bandera et al.
`(“Bandera”) (Ex. 1004).
`C. GROUND 3: Claims 1, 2, 5, 9, 11, 13, and 15-22 are obvious under §
`103(a) over U.S. Patent No. 6,202,023 to Hancock et al. (“Hancock”) (Ex. 1003)
`alone in view of the knowledge of a person of ordinary skill in the art.
`5
`D. GROUND 4: Claims 1, 2, 5, 9, 11, 13, and 15-22 are obvious under §
`5
`103(a) over Hancock (Ex. 1003) in view of Bandera (Ex. 1004).
`5
`V. OVERVIEW
`5
`A. The Board Should Not Exercise Its Discretion to Deny Institution
`8
`B. The ’748 Patent
`8
`(i) Summary of Alleged Invention of the ’748 Patent
`10
`(ii)
`’748 Prosecution History
`11
`(iii) Effective Filing Date Of The Challenged Claims
`11
`C. The Primary Prior Art References
`11
`(i) Barbosa
`12
`(ii) Hancock
`12
`(iii) Bandera
`VI. RELEVANT INFORMATION CONCERNING THE ’748 PATENT 12
`
`5
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`Petition for IPR of U.S. 9,454,748
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`A. Person of Ordinary Skill in the Art
`13
`B. Construction of Terms Used in the Claims
`13
`(i)
`“GPS integral thereto”
`14
`(ii) “token”
`17
`(iii) “questionnaire”
`17
`(iv) “originating computer” / “recipient computer” / “central computer”
`18
`VII. SPECIFIC GROUNDS FOR PETITION
`18
`A. Barbosa Renders Obvious Claims 1, 9, 11, 13, and 15-22
`18
`(i)
`Independent Claim 19
`18
`(A) “A method for managing data comprising the steps of:”
`(B) “(a) establishing communications between a handheld computing device
`and an originating computer wherein said handheld computing device has a
`GPS integral thereto”
`19
`(C) “(b) receiving within said handheld computing device a transmission of a
`tokenized questionnaire from said originating computer,”
`21
`(D) “said tokenized questionnaire including at least one question requesting
`location identifying information,”
`24
`(E) “said tokenized questionnaire comprising a plurality of device
`independent tokens;”
`(F) “(c) ending said communications between said handheld computing
`27
`device and said originating computer;”
`(G) “(d) after said communications has been ended, (d1) 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,”
`27
`(H) (d2) storing within said computing device said at least one response from
`the first user;
`28
`(I) “(d3) using said GPS to automatically obtain said location identifying
`information in response to said at least one question that requests location
`identifying information;”
`
`24
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`(J) “(e) establishing communications between said handheld computing
`device and a recipient computer;”
`(K) “(f) transmitting a value representative of each of said at least one
`response stored within said handheld computing device to said recipient
`30
`computer; and,”
`(L) “(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.”
`30
`(ii) Claim 20
`32
`(iii) Independent Claim 21
`32
`(A) “A method for managing data comprising the steps of:”
`32
`(B) “(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:”
`32
`(C) “(1) establishing communications between a handheld computing device
`and an originating computer wherein said handheld computing device has a
`GPS integral thereto;”
`33
`(D) “(2) receiving within said handheld computing device a transmission of a
`tokenized questionnaire, including at least one question requesting GPS
`coordinates and at least one additional question, said tokenized questionnaire
`comprising a plurality of device independent tokens;”
`33
`(E) “(3) ending said communications between said handheld computing
`device and said originating computer;”
`(F) “(4) after said communications has been ended, (i) executing at least a
`portion of said plurality of tokens comprising said questionnaire on said
`34
`handheld computing device,”
`(G) “(ii) automatically entering the GPS coordinates into said questionnaire:”
`
`34
`(H) “(iii) presenting said at least one additional question to a user; (iv)
`receiving at least one response from the user to each of said presented at least
`one additional question,”
`34
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`Petition for IPR of U.S. 9,454,748
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`(I) “(v) storing at least one value representative of said GPS coordinates and
`said at least one response within said handheld computing device;”
`35
`(J) “(5) establishing a communications link between said handheld
`35
`computing device and a recipient computer;”
`(K) “(6) transmitting said stored at least one value representative of said GPS
`coordinates and said at least one response stored within said handheld
`35
`computing device to said recipient computer; and,”
`(L) “(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,”
`(M) “(b) forming a visually perceptible report from any of said at least one
`36
`stored user data item.”
`37
`(iv) Claim 22
`37
`(v)
`Independent Claim 1
`37
`(A) “A method for managing data including the steps of:”
`(B) “(a) creating a questionnaire comprising a series of questions customized
`for a location;”
`37
`(C) “(b) said questionnaire including at least one question requesting GPS
`coordinates;”
`(D) “(c) tokenizing said questionnaire, thereby producing a plurality of
`38
`device indifferent tokens representing said questionnaire;”
`(E) “(d) transmitting said plurality of tokens to a remote computing device;”
`
`38
`(F) “(e) when said remote computing device is at said location, executing at
`least a portion of said plurality of tokens representing said questionnaire at
`within said remote computing device to collect a response from a user;”
`38
`(G) “(f) automatically entering the GPS coordinates into said questionnaire;”
`
`39
`(H) “(g) transmitting at least a portion of said response from the user to a
`server in real time via a network; and”
`
`36
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`(I) “(h) storing said response at said server.”
`39
`(vi) Independent Claim 9
`40
`(A) “A method for managing data comprising the steps of:”
`(B) “(a) establishing communications between a handheld computing device
`and an originating computer wherein said handheld computing device has a
`GPS integral thereto;”
`40
`(C) “(b) using said GPS to automatically obtain location identifying
`information for said handheld computing device;”
`(D) “(c) transmitting said location identifying information from said
`40
`handheld computing device to said originating computer;”
`(E) “(d) receiving within said handheld computing device a transmission of a
`tokenized questionnaire customized for a particular location from said
`originating computer, said tokenized questionnaire comprising a plurality of
`device indifferent tokens;”
`40
`(F) “(e) ending said communications between said handheld computing
`device and said originating computer;”
`(G) “(f) after said communications has been ended, when said handheld
`computing device at said particular location: (f1) 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 user, and,”
`(H) “(f2) storing within said computing device said at least one response
`from the user;”
`(I) “(g) establishing communications between said handheld computing
`device and a recipient computer; and,”
`(J) “(h) transmitting a value representative of each of said at least one
`response stored within said handheld computing device to said recipient
`computer.”
`(vii) Claim 11
`(viii) Claim 13
`(ix) Claim 15
`(x)
`Independent Claim 16
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`40
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`41
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`41
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`41
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`41
`41
`41
`42
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`(A) “A method for manacling[sic] data comprising the steps of:”
`(B) “(a) establishing communications between a handheld computing device
`and an originating computer, said handheld device having at least a
`42
`capability to determine a current location thereof;”
`(C) “(b) receiving within said handheld computing device a transmission of a
`tokenized questionnaire including at least one question requesting GPS
`coordinates, said tokenized questionnaire comprising a plurality of device
`independent tokens;”
`(D) “(c) ending said communications between said handheld computing
`43
`device and said originating computer;”
`(E) “(d) after said communications has been terminated, when said handheld
`computing device is at said particular location (d1) 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;”
`(F) “(d2) storing within said handheld computing device said current
`location;”
`(G) “(d3) automatically entering the GPS coordinates into said
`questionnaire;”
`(H) “(e) establishing communications between said handheld computing
`43
`device and a recipient computer; and,”
`(I) “(f) transmitting at least one value representative of said stored current
`location to said recipient computer.”
`43
`(xi) Claim 17
`43
`(xii) Claim 18
`44
`B. Barbosa In View of Bandera Renders Obvious Claims 1, 9, 11, 13, and
`15-22
`44
`(i) A Person of Ordinary Skill Would Have Considered Barbosa In
`Conjunction With Bandera
`(ii) Claims 1, 9, 11, 13, and 15-22
`C. Hancock Renders Obvious Claims 1, 2, 5, 9, 11, 13, and 15-22
`(i)
`Independent Claim 19
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`43
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`46
`(A) “A method …”
`46
`(B) “(a) establishing communications …”
`47
`(C) “(b) receiving within said handheld computing device …”
`(D) “said tokenized questionnaire including at least one question requesting
`location identifying information,”
`51
`(E) “said tokenized questionnaire comprising a plurality of device
`51
`independent tokens;”
`52
`(F) “(c) ending said communications …”
`54
`(G) “(d) after said communications has been ended, (d1) executing …”
`54
`(H) (d2) storing within said computing device …”
`55
`(I) “(d3) using said GPS …”
`55
`(J) “(e) establishing communications …”
`56
`(K) “(f) transmitting a value …”
`(L) “(g) after receipt of said transmission of step (f), transmitting a notice of
`said received value …”
`56
`(ii) Claim 20
`57
`(iii) Independent Claim 21
`57
`(A) “A method …”
`57
`(B) “(a) within a central computer …”
`57
`(C) “(1) establishing communications …”
`58
`(D) “(2) receiving within said handheld computing device …”
`59
`(E) “(3) ending said communications …”
`60
`(F) “(4) after said communications has been ended, (i) executing …”
`61
`(G) “(ii) automatically entering …”
`61
`(H) “(iii) presenting … (iv) receiving …”
`62
`(I) “(v) storing at least one value …”
`62
`(J) “(5) establishing a communications link …”
`63
`(K) “(6) transmitting said stored at least one value …”
`63
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`(L) “(7) storing within said recipient computer …”
`(M) “(b) forming a visually perceptible report …”
`(iv) Claim 22
`(v)
`Independent Claim 1
`(A) “A method …”
`(B) “(a) creating a questionnaire …”
`(C) “(b) said questionnaire …;”
`(D) “(c) tokenizing …;”
`(E) “(d) transmitting …;”
`(F) “(e) when said remote computing device is at said location, executing
`…;”
`(G) “(f) automatically entering …;”
`(H) “(g) transmitting at least a portion …”
`(I) “(h) storing said response at said server.”
`(vi) Claim 2
`(vii) Claim 5
`(viii) Independent Claim 9
`(A) “A method …”
`(B) “(a) establishing communications …”
`(C) “(b) using said GPS …”
`(D) “(c) transmitting said location …”
`(E) “(d) receiving …”
`(F) “(e) ending said communications …”
`(G) “(f) after said communications has been ended …”
`(H) “(f2) storing …”
`(I) “(g) establishing communications …”
`(J) “(h) transmitting a value …”
`(ix) Claim 11
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`64
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`(x) Claim 13
`71
`(xi) Claim 15
`72
`(xii) Independent Claim 16
`72
`(A) “A method …”
`72
`(B) “(a) establishing communications …”
`72
`(C) “(b) receiving …”
`72
`(D) “(c) ending said communications …”
`72
`(E) “(d) after said communications has been terminated …”
`72
`(F) “(d2) storing …”
`72
`(G) “(d3) automatically entering …”
`72
`(H) “(e) establishing communications …”
`72
`(I) “(f) transmitting at least one value …”
`73
`(xiii) Claim 17
`73
`(xiv) Claim 18
`D. Hancock In View of Bandera Renders Obvious Claims 1, 2, 5, 9, 11, 13,
`and 15-22
`73
`(i) A Person of Ordinary Skill Would Have Considered Bandera In
`Conjunction With Hancock
`(ii) Claims 1, 2, 5, 9, 11, 13, and 15-22
`VIII. CONCLUSION
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`Petition for IPR of U.S. 9,454,748
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`EXHIBIT LIST
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`Exhibit No.
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`
`1009
`
`1010
`
`1011
`1012
`1013
`1014
`1015
`
`Description
`U.S. Patent No. 9,454,748 to Payne (“the ’748 patent”)
`U.S. Patent No. 6,961,586 to Barbosa et al. (“Barbosa”)
`U.S. Patent No. 6,202,023 to Hancock et al. (“Hancock”)
`U.S. Patent No. 6,332,127 to Bandera et al. (“Bandera”)
`Declaration of Kendyl Roman
`Curriculum Vitae of Kendyl Roman
`Excerpted portions of the ’748 patent file history
`Patent Owner’s Infringement Contentions Cover Document
`against Uber Technologies, Inc. and Choice Hotels International,
`Inc.
`Patent Owner’s Infringement Contentions Chart against Uber
`Technologies, Inc.
`Patent Owner’s Infringement Contentions Chart against Choice
`Hotels International, Inc.
`U.S. Patent 7,822,816 (“the ’816 patent”)
`The ’816 patent Institution Decision
`The ’816 patent Claim Construction Order
`U.S. Patent No. 6,381,535 to Durocher (“Durocher”)
`International Patent Application Publication No.
`WO 00/49530 to Parasnis (“Parasnis”)
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`- xi -
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`I.
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`
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`Petition for IPR of U.S. 9,454,748
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`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED (37
`C.F.R. § 42.22(A))
`
`Uber Technologies, Inc. (“Uber”) and Choice Hotels International, Inc.
`
`(“Choice Hotels”) (collectively, “Petitioners”) petition for the institution of inter
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`partes review of claims 1, 2, 5, 9, 11, 13, and 15-22 (the “Challenged Claims”) of
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`U.S. Patent No. 9,454,748 to Payne (“the ’748 patent,” attached as Ex. 1001).
`
`USPTO records indicate that the ’748 patent is assigned to Fall Line Patents, LLC
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`(“P.O.”), which is currently asserting the ’748 patent against Petitioners in
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`concurrent litigations.
`
`II.
`
`MANDATORY NOTICES
`
`A. Real Parties-in-Interest
`
`
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`The real parties-in-interest to this Petition are Uber Technologies, Inc. and
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`Choice Hotels International, Inc.
`
`B. Related Matters
`
`
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`P.O. sued Petitioners in the U.S. District Court for the Eastern District of
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`Texas, alleging infringement of the ’748 patent (“’748 Litigation”). In particular,
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`as of the filing date of this Petition, and to the best knowledge of Petitioners, the
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`’748 patent is or has been involved in the following matters, each in the United
`
`States District Court for the Eastern District of Texas:
`
`Case Caption
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`Number
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`-1-
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`Fall Line Patents, LLC v. American Airlines Group, Inc. et
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`6:17-cv-00202
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`Petition for IPR of U.S. 9,454,748
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`al. (terminated)
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`Fall Line Patents, LLC v. Cinemark Holdings, Inc. et al.
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`6:17-cv-00203
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`(consolidated with
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`6:17-cv-00202)
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`Fall Line Patents, LLC v. Grubhub Holdings, Inc. et al.
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`6:17-cv-00204
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`(terminated)
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`Fall Line Patents, LLC v. Choice Hotels Int’l, Inc.
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`6:17-cv-00407
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`(consolidated with
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`6:17-cv-00202)
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`Fall Line Patents, LLC v. Uber Technologies, Inc.
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`6:17-cv-00408
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`(consolidated with
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`6:17-cv-00202)
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`In addition, the ’748 patent is the subject of a pending inter partes
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`review petition (IPR2018-00043) (“Unified IPR”) filed on October 6, 2017 by
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`Unified Patents Inc. (“Unified Petition”). The issues presented by this Petition are
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`substantially different than those raised by the Unified Petition. In particular, the
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`Unified Petition challenged only claims 16-19 and 21-22, whereas this Petition
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`challenges those claims as well as eight additional claims—nos. 1, 2, 5, 9, 11, 13,
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`15, and 20. Furthermore, this Petition relies on entirely different prior art with no
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`Petition for IPR of U.S. 9,454,748
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`overlap to the prior art at issue in the Unified Petition. P.O. has not filed a
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`preliminary response to the Unified Petition, and under 35 U.S.C. § 314(b), the
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`Board is not required to issue a decision on whether to institute the Unified Petition
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`until April 12, 2018.
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`
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`The ’748 patent is a continuation of U.S. Application No. 10/643,516, filed
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`August 19, 2003, which issued as U.S. Patent 7,822,816 (“the ’816 patent”).
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`Claims 1-14 of the ’816 patent (all claims) were the subject of an ex parte
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`reexamination proceeding (U.S. Serial No. 90/012,829), which resulted in a
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`reexamination certificate cancelling those claims. Ex. 1011 at 18.
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`Additionally, claims 1-14 of the ’816 patent were the subject of an inter partes
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`review petition (IPR2014-00140), which the Board instituted (“’816 Institution
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`Decision”). Ex. 1012. Thereafter, the Board terminated IPR2014-00140 upon
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`cancellation of the challenged claims in the aforementioned ex parte
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`reexamination.
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`C. Lead and back-up counsel
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`Designation of Lead Counsel
`(37 C.F.R. § 42.8(b)(3))
`Jonathan I. Detrixhe (Reg. #68,556)
`jdetrixhe@reedsmith.com
`REED SMITH, LLP
`101 Second Street
`Suite 1800
`San Francisco, CA 94105
`
`Back-Up Counsel
`
`Gerard M. Donovan (Reg. #67,771)
`gdonovan@reedsmith.com
`REED SMITH, LLP
`1301 K Street, NW
`Suite 1000 – East Tower
`Washington, DC 20005
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`Tel: 415-543-8700 Fax: 415 391 8269
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`Petition for IPR of U.S. 9,454,748
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`Tel: 202.414.9224 Fax: 202.414.9299
`
`John P. Bovich (pro hac vice application
`forthcoming)
`jbovich@reedsmith.com
`REED SMITH, LLP
`101 Second Street
`Suite 1800
`San Francisco, CA 94105
`Tel: 415-543-8700 Fax: 415 391 8269
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`D.
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`Service Information
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`Please direct all correspondence to lead and back-up counsel at the above
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`addresses.
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`III.
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`CERTIFICATION OF GROUNDS FOR STANDING
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`
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`Petitioner certifies pursuant to Rule 42.104(a) that the patent for which
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`review is sought is available for inter partes review and that Petitioner is not
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`barred or estopped from requesting an inter partes review challenging the patent
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`claims on the grounds identified in this Petition.
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`IV.
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`OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
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`
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`The Challenged Claims are unpatentable for being obvious under 35 U.S.C.
`
`§§ 102 and 103. Specifically:
`
`A. GROUND 1: Claims 1, 9, 11, 13, and 15-22 are obvious under §
`103(a) over U.S. Patent No. 6,961,586 to Barbosa et al. (“Barbosa”)
`(Ex. 1002) alone in view of the knowledge of a person of ordinary
`skill in the art.
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`Petition for IPR of U.S. 9,454,748
`
`B. GROUND 2: Claims 1, 9, 11, 13, and 15-22 are obvious under §
`103(a) over Barbosa (Ex. 1002) in view of U.S. Patent No. 6,332,127
`to Bandera et al. (“Bandera”) (Ex. 1004).
`
`C. GROUND 3: Claims 1, 2, 5, 9, 11, 13, and 15-22 are obvious under §
`103(a) over U.S. Patent No. 6,202,023 to Hancock et al. (“Hancock”)
`(Ex. 1003) alone in view of the knowledge of a person of ordinary
`skill in the art.
`
`D. GROUND 4: Claims 1, 2, 5, 9, 11, 13, and 15-22 are obvious under §
`103(a) over Hancock (Ex. 1003) in view of Bandera (Ex. 1004).
`
`
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`The Board should institute review on all presented grounds: Petitioners
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`recognize that the Board may use its discretion to institute trial on only certain
`
`grounds. Here, there is no undue burden for the Board, as only two primary
`
`references are presented, in Grounds 1-2 and 3-4 respectively. Petitioners would be
`
`prejudiced should the Board institute trial on only certain grounds because
`
`Petitioners may be precluded from asserting their best challenge. Accordingly, the
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`Board should exercise its discretion to institute trial for the challenged claims on
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`all grounds.
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`
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`This Petition is supported by the declaration of Mr. Kendyl Roman (Ex.
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`1005).
`
`V.
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`OVERVIEW
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`A. The Board Should Not Exercise Its Discretion to Deny Institution
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`
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`The Board should not exercise its discretion to deny the instant Petition
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`under either 35 U.S.C. §§ 314(a) or 325(d) because the instant Petition: 1) is filed
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`- 5 -
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`by different petitioners, neither of whom are real parties-in-interest to the Unified
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`Petition for IPR of U.S. 9,454,748
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`Petition; 2) is being filed without the benefit of a preliminary response from P.O.
`
`or an institution decision from the Board in the Unified IPR; 3) challenges different
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`claims; 4) relies on entirely different prior art; and 5) is being filed only two
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`months after petitioners became aware of all of the prior art relied upon in the
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`instant Petition.
`
`
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`The first two factors alone are sufficient for the Board to decline to exercise
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`its discretion to deny the instant Petition under 35 U.S.C. § 314(a). In particular,
`
`for factor 1), the Unified Petition was filed by a different petitioner. Neither Uber
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`nor Choice Hotels is a real party-party-in-interest to the Unified IPR, exercised any
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`control over Unified Patents Inc. with respect to the Unified Petition, or provided
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`any input thereto, and not instituting this Petition in view of the Unified Petition
`
`would unfairly deprive Petitioners of access to the IPR process. For factor 2), P.O.
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`has not filed a preliminary response to the Unified Petition, which would have
`
`been due on January 12, 2018, and the Board has not yet issued a decision on
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`whether to institute the Unified Petition, which it is not required to do until April
`
`12, 2018. As such, Petitioners have not used the Unified IPR as a roadmap to guide
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`the instant Petition. See Unified Patents, Inc. v. Silver State Intellectual Techs.,
`
`Inc., Case IPR2017-01198, Paper 6, slip op. at 19-20 (PTAB Sept. 28, 2017)
`
`(declining to exercise discretion under § 314(a) to deny an IPR petition because
`
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`- 6 -
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`
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`“[t]he instant Petitioner is not Google, Inc., the petitioner … that earlier challenged
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`Petition for IPR of U.S. 9,454,748
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`the ’498 patent,” and “[n]o patent owner preliminary response or other substantive
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`paper was filed or issued in [the preceeding IPR].”).
`
`
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`In addition, the instant Petition challenges eight additional claims not
`
`addressed by the Unified Petition, which provides yet another reason for the Board
`
`to decline to exercise discretion under § 314(a) to deny the instant Petition. See
`
`NVIDIA Corp. v. Polaris Innovations Ltd., Case IPR2017-01787, Paper 9, slip op.
`
`at 4-6 (PTAB Jan. 9, 2018) (declining to exercise discretion under § 314(a) to deny
`
`an IPR petition in part because “the current Petition challenges seven claims that
`
`are not at issue in [the previous IPR].”)
`
`
`
`Analysis of other factors further confirm that the Board should decline to
`
`exercise its discretion under § 314(a) to deny the instant Petition. In particular, the
`
`instant Petition relies on entirely different prior art—Barbosa, Bandera, and
`
`Hancock, none of which was relied on by the Unified Petition. In addition,
`
`Petitioners did not learn of Bandera until they received the results of a prior art
`
`search on November 23, 2017, only two months prior to filing the instant Petition.
`
`Accordingly, for all of the above reasons, the Board should decline to exercise its
`
`discretion under § 314(a) to deny the instant Petition.
`
`
`
`For the same reasons, the Board also should not exercise its discretion to
`
`deny the instant Petition under 35 U.S.C. § 325(d). In particular, the instant
`
`
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`- 7 -
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`
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`
`
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`Petition relies on entirely different prior art, challenges eight additional claims not
`
`Petition for IPR of U.S. 9,454,748
`
`addressed by the Unified Petition, and presents different arguments that are not
`
`redundant to those presented by the Unified Petition. See Valeo North Am., Inc. v.
`
`Magna Electronics, Inc., Case IPR2014-01208, Paper 13, slip op. at 12-15 (Dec.
`
`23, 2014) (declining to exercise discretion under § 325(d) to deny an IPR petition
`
`because “none of the grounds of unpatentability in this Petition rely upon exactly
`
`the same combination of prior art as the grounds of unpatentability asserted against
`
`the same claims in the [previous] IPR.”).
`
`B.
`
`The ’748 Patent
`
`(i)
`
`Summary of Alleged Invention of the ’748 Patent
`
`
`
`Like the ’816 patent, which the Board summarized in the ’816 Institution
`
`Decision (Ex. 1012 at 4-7), the ’748 patent generally relates to the distribution of
`
`electronic forms via the Internet or to mobile devices, and in particular, a method
`
`for the management of data collected from a remote computing device. Ex. 1001,
`
`Abstract. In particular, the ’748 patent describes using computerized questionnaires
`
`to allow a user to complete a form on a wireless device for transmission to a server.
`
`Id. at 10:44-54. A client can design a questionnaire by creating a list of questions,
`
`with corresponding tokens, and may include follow up questions depending on
`
`responses to other questions. Id. at 8:51-9:2. When the questionnaire is complete,
`
`the questions and tokens can be transmitted to a handheld device, whose user can
`
`
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`- 8 -
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`
`
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`provide responses to the questions. Id. at 9:3-13. The responses can be stored on
`
`Petition for IPR of U.S. 9,454,748
`
`the handheld device and transmitted to the server, and the server can store the data
`
`in a database. Id. at 9:57-10:8. In addition, the ’748 patent teaches that the
`
`handheld device and server may be “loosely networked,” such that the server and
`
`handheld devices are “tolerant of intermittent network connections.” Id. at 4:64-
`
`5:7.
`
`
`
`The ’748 claims recite only minor differences in subject matter compared to
`
`the ’816 claims that the Board found as likely obvious in the ’816 Institution
`
`Decision. Ex. 1012 at 22. For example, the ’748 claims include limitations directed
`
`to requesting location information, such as by specifying that the questionnaire
`
`contain “at least one question requesting GPS coordinates.” Ex. 1001 at cl. 1. In
`
`addition, some claims of the ’748 patent recite that the tokens be “device
`
`independent.”1 Id. at cl. 19. For example, the ’748 patent 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. As demonstrated
`
`
`1 Claims 7 and 8 of the ’816 patent, now cancelled, recite a similar feature of
`
`“performing at least the steps [. . .] for at least two different remote computing
`
`device types using the same tokens.”
`
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`- 9 -
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`
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`below, however, data collection systems that addressed these issues were well-
`
`Petition for IPR of U.S. 9,454,748
`
`known prior to the ’748 patent’s priority date.
`
`(ii)
`
`’748 Prosecution History
`
`
`
`The prosecution history of the ’748 Patent includes multiple Office Actions
`
`which included double-patenting rejections over the ’816 Patent2 and claim
`
`rejections under §§ 102 and 103 over various references. To overcome some
`
`rejections, the applicant alleged conception of the claims “prior to January 1,
`
`2002” and diligent reduction to practice from the alleged conception to the August
`
`19, 2002 filing of U.S. Provisional Application Number 60/404,491 (“the ’491
`
`Provisional”), which is the earliest claimed priority date. Ex. 1007 at 134-136.
`
`
`
`Although the Examiner withdrew some prior art rejections based on
`
`applicant’s prior conception arguments (id. at 173), the Examiner continued to
`
`reject the claims under § 103. Id. at 159-172. In an attempt to overcome the § 103
`
`rejections, P.O. amended the claims to recite, inter alia, that the questionnaire
`
`recited in the claims comprised “device independent tokens.” Id. at 180-214.
`
`Additionally, P.O. amended the claims to require that at least one question
`
`
`2 Applicant submitted a terminal disclaimer against the ’816 patent to overcome the
`
`double-patenting rejections, establishing that the claims in the ’748 patent are not
`
`patentably distinct from its now-canceled parent. Ex. 1007 at 153.
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`- 10 -
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`
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`requested “location identifying information” and that the remote computing device
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`Petition for IPR of U.S. 9,454,748
`
`of the claims had a “GPS integral thereto.” Id. at 250-285.
`
`
`
`The Examiner then issued a Notice of Allowance. Id. at 296. However, the
`
`grounds and references on which Petitioners seek review, which were not before
`
`the Examiner, teach or suggest all the features of the Challenged Claims.
`
`(iii) Effective Filing Date Of The Challenged Claims
`
`
`
`The ’748 patent claims the benefit of U.S. Provisional App. No. 60/404,491
`
`(“the ’491 Application”). Accordingly, the August 19, 2002 filing date (“Earliest
`
`Filing Date”) of the ’491 Application is the earliest filing date to which the
`
`Challenged Claims could be entitled, provided that Plaintiff is able to demonstrate
`
`that the Challenged Claims are disclosed in the ’491 Application in the manner
`
`required by 35 U.S.C. § 112, ¶ 1. See, e.g., SAP America, Inc. v. Pi-Net Int’l, Inc.,
`
`Case IPR2014-00414, Paper No. 11 at 11-14 (PTAB August 18, 2014). This is the
`
`same priority date asserted by P.O. against Petitioners in the ’748 Litigation. Ex.
`
`1008 at 2.
`
`C. The Primary Prior Art References
`
`(i)
`
`Barbosa
`
`
`
`Barbosa is a U.S. patent that was filed on September 17, 2001 and issued on
`
`November 1, 2005. Ex. 1002 at 1. Accordingly, Barbosa is prior art at least under
`
`35 U.S.C. § 102(e) (pre-AIA) because Barbosa’s September 17, 2001 filing date
`
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`- 11 -
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`predates the earliest invention date P.O. has claimed for the ’748 patent—August
`
`Petition for IPR of U.S. 9,454,748
`
`19, 2002, as explained above. Barbosa’s filing date also predates the earliest
`
`invention date claimed during prosecution—January 1, 2002.
`
`(ii) Hancock
`
`
`
`Hancock is a U.S. patent that issued on March 13, 2001. Ex. 1003 at 1.
`
`Accordingly, Hancock is prior art at least under 35 U.S.C. § 102(b) (pre-AIA)
`
`because Hancock pre-dates by more than one year the Earliest Filing Date.
`
`(iii) Bandera
`
`
`
`Bandera is a U.S. patent that was filed on January 28, 1999 and issued on
`
`December 18, 2001. Ex. 1004 at 1. Accordingly, Bandera is prior art at least under
`
`35 U.S.C. § 102(e) (pre-AIA) because Bandera’s January 28, 1999 filing date
`
`predates the earliest invention date P.O. has claimed for the ’748 patent—August
`
`19, 2002, as explained above, and Bandera issued as a U.S. patent. Bandera also is
`
`prior art under 35 U.S.C. § 102(a) (pre-AIA) because Bandera’s December 18,
`
`2001 issuance date predates the earliest claimed invention date.
`
`VI.
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`RELEVANT INFORMATION CONCERNING THE ’748 PATENT
`
`A.
`
`Person of Ordinary Skill in the Art
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`
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`As Mr. Roman explains, a person of ordinary skill in the art at and before the
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`priority
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