Case 6:18-cv-00407-RWS Document 228 Filed 01/23/23 Page 1 of 18 PageID #: 5325
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`FALL LINE PATENTS, LLC,
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`Plaintiff,
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`v.
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`ZOE’S KITCHEN, INC., ET AL,
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`Defendants.
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`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`Civil Action No. 6:18-CV-00407-RWS
`(LEAD CASE)
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`CLAIM CONSTRUCTION ORDER
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`Before the Court is Fall Line’s Opening Claim Construction Brief. Docket No. 99.1 This
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`brief was filed in June of 2019. After briefing was completed and the Court heard argument on the
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`issue in August of 2019. See Docket Nos. 102, 103, 117. Two days after the claim construction
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`hearing, the Court granted a stay in this case pending Inter Partes Review. Docket No. 110. On
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`October 20, 2022, the Court lifted the stay in this case. Docket No. 164. Shortly afterwards, the
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`Court ordered supplemental briefing on claim construction. Docket No. 201. The parties jointly
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`submitted a supplemental brief on December 22, 2022, which identified the agreed constructions
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`and the terms that require review. Docket No. 205. And prior to the joint supplemental brief, the
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`parties had submitted additional briefing for the Court’s consideration. See, e.g., Docket Nos. 134,
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`139, 169. Now, in view of the complete record before it, the Court provides the constructions set
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`forth below.
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`1 Since claim construction first began in 2019, a number of Defendants have settled with Fall Line.
`The only remaining Defendants at this time are the McDonald’s defendants, McDonalds
`Corporation and McDonalds USA, LLC.
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`Page 1 of 18
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`Instacart, Ex. 1027
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`Case 6:18-cv-00407-RWS Document 228 Filed 01/23/23 Page 2 of 18 PageID #: 5326
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`I.
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` BACKGROUND
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`There is one remaining claim in this case—Claim 7 of U.S. Patent No. 9,454,748 (the ’748
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`Patent). The ’748 Patent, titled “System and Method for Data Management,” was filed on October
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`22, 2010 and issued on September 27, 2016. The ’748 Patent generally “relates to a system of
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`computing devices for the collection and management of information” and “[m]ore particularly .
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`. . relates to a system for collecting and managing information including a plurality of computer
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`devices loosely networked to a server and an operating system for a computer which provides a
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`number of features favorable for use in the inventive system.” ’748 Patent at 1:16–24. The Abstract
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`of the ’748 Patent states:
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`A method for the management of data collected from a remote computing device
`including the steps of: creating a questionnaire; transmitting the questionnaire to a
`remote computer; executing the questionnaire in the remote computer to prompt a
`user for responses to questions of the questionnaire; transmitting the responses to a
`sever via a network; making the responses available on the Web. Preferably,
`computers used in connection with the inventive method are loosely networked in
`that network connections between computers are not always available and, when a
`connection is not available, data is stored at a node of the network and transmitted
`at the earliest time when a connection is available. In one preferred embodiment,
`the inventive method is used to collect survey data and to make the responses to the
`survey available to a client in virtually real time over the Internet.
`
`Claim 7 of the ’748 Patent, the claim in dispute in this case, recites the following elements
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`(disputed terms emphasized):
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`7. A method for collecting survey data from a user and making responses available
`via the Internet, comprising:
`(a) designing a questionnaire including at least one question said
`questionnaire customized for a particular location having branching
`logic on a first computer platform wherein at least one of said at least
`one questions requests location identifying information;
`(b) automatically transferring said designed questionnaire to at least one
`loosely networked computer having a GPS integral thereto;
`(c) when said loosely networked computer is at said particular location,
`executing said transferred questionnaire on said loosely networked
`computer, thereby collecting responses from the user;
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`Case 6:18-cv-00407-RWS Document 228 Filed 01/23/23 Page 3 of 18 PageID #: 5327
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`(d) while said transferred questionnaire is executing, using said GPS to
`automatically provide said location identifying information as a
`response to said executing questionnaire;
`(e) automatically transferring via the loose network any responses so
`collected in real time to a central computer; and,
`(f) making available via the Internet any responses transferred to said central
`computer in step (e).
`
`
`
`II.
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`LEGAL PRINCIPLES
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`A. Claim Construction
`
`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to
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`which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312
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`(Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc.,
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`381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start by
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`considering the intrinsic evidence. Phillips, 415 F.3d at 1313; C.R. Bard, Inc. v. U.S. Surgical
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`Corp., 388 F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns Grp.,
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`Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves,
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`the specification, and the prosecution history. Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d
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`at 861. The general rule—subject to certain specific exceptions—is that each claim term is
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`construed according to its ordinary and accustomed meaning as understood by one of ordinary
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`skill in the art at the time of the invention in the context of the patent. Phillips, 415 F.3d at 1312–
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`13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003); Azure Networks, LLC
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`v. CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014) (quotation marks omitted) (“There is a heavy
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`presumption that claim terms carry their accustomed meaning in the relevant community at the
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`relevant time.”) cert. granted, judgment vacated, 135 S. Ct. 1846 (2015).
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`“The claim construction inquiry . . . begins and ends in all cases with the actual words of
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`the claim.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998).
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`“[I]n all aspects of claim construction, ‘the name of the game is the claim.’” Apple Inc. v. Motorola,
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`Case 6:18-cv-00407-RWS Document 228 Filed 01/23/23 Page 4 of 18 PageID #: 5328
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`Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker Co., 150 F.3d 1362, 1369 (Fed.
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`Cir. 1998)) overruled on other grounds by Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed.
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`Cir. 2015). First, a term’s context in the asserted claim can be instructive. Phillips, 415 F.3d at
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`1314. Other asserted or unasserted claims can also aid in determining the claim’s meaning, because
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`claim terms are typically used consistently throughout the patent. Id. Differences among the claim
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`terms can also assist in understanding a term’s meaning. Id. For example, when a dependent claim
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`adds a limitation to an independent claim, it is presumed that the independent claim does not
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`include the limitation. Id. at 1314–15.
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`“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id. (quoting
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`Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)). “[T]he
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`specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive;
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`it is the single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics Corp. v.
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`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am. Corp.,
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`299 F.3d 1313, 1325 (Fed. Cir. 2002). This is true because a patentee may define his own terms,
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`give a claim term a different meaning than the term would otherwise possess, or disclaim or
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`disavow the claim scope. Phillips, 415 F.3d at 1316. In these situations, the inventor’s
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`lexicography governs. Id.
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`The specification may also resolve ambiguous claim terms “where the ordinary and
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`accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of
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`the claim to be ascertained from the words alone.” Teleflex, Inc., 299 F.3d at 1325. But,
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`“‘[a]lthough the specification may aid the court in interpreting the meaning of disputed claim
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`language, particular embodiments and examples appearing in the specification will not generally
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`be read into the claims.’” Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir.
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`Case 6:18-cv-00407-RWS Document 228 Filed 01/23/23 Page 5 of 18 PageID #: 5329
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`1998) (quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988));
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`see also Phillips, 415 F.3d at 1323. “[I]t is improper to read limitations from a preferred
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`embodiment described in the specification—even if it is the only embodiment—into the claims
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`absent a clear indication in the intrinsic record that the patentee intended the claims to be so
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`limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).
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`The prosecution history is another tool to supply the proper context for claim construction
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`because, like the specification, the prosecution history provides evidence of how the U.S. Patent
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`and Trademark Office (“PTO”) and the inventor understood the patent. Phillips, 415 F.3d at 1317.
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`However, “because the prosecution history represents an ongoing negotiation between the PTO
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`and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the
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`specification and thus is less useful for claim construction purposes.” Id. at 1318; see also Athletic
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`Alts., Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir. 1996) (ambiguous prosecution history
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`may be “unhelpful as an interpretive resource”).
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`Although extrinsic evidence can also be useful, it is “‘less significant than the intrinsic
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`record in determining the legally operative meaning of claim language.’” Phillips, 415 F.3d at
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`1317 (quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a
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`court understand the underlying technology and the manner in which one skilled in the art might
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`use claim terms, but technical dictionaries and treatises may provide definitions that are too broad
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`or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert
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`testimony may aid a court in understanding the underlying technology and determining the
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`particular meaning of a term in the pertinent field, but an expert’s conclusory, unsupported
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`assertions as to a term’s definition are not helpful to a court. Id. Extrinsic evidence is “less reliable
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`than the patent and its prosecution history in determining how to read claim terms.” Id. The
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`Supreme Court has explained the role of extrinsic evidence in claim construction:
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`In some cases, however, the district court will need to look beyond the patent’s
`intrinsic evidence and to consult extrinsic evidence in order to understand, for
`example, the background science or the meaning of a term in the relevant art during
`the relevant time period. See, e.g., Seymour v. Osborne, 11 Wall. 516, 546 (1871)
`(a patent may be “so interspersed with technical terms and terms of art that the
`testimony of scientific witnesses is indispensable to a correct understanding of its
`meaning”). In cases where those subsidiary facts are in dispute, courts will need to
`make subsidiary factual findings about that extrinsic evidence. These are the
`“evidentiary underpinnings” of claim construction that we discussed in Markman,
`and this subsidiary factfinding must be reviewed for clear error on appeal.
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`Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 331–32 (2015).
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`B.
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`Departing from the Ordinary Meaning of a Claim Term
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`There are “only two exceptions to [the] general rule” that claim terms are construed
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`according to their plain and ordinary meaning: “1) when a patentee sets out a definition and acts
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`as his own lexicographer, or 2) when the patentee disavows the full scope of the claim term either
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`in the specification or during prosecution.”2 Golden Bridge Tech., Inc. v. Apple Inc., 758 F.3d
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`1362, 1365 (Fed. Cir. 2014) (quoting Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362,
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`1365 (Fed. Cir. 2012)); see also GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309
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`(Fed. Cir. 2014) (“[T]he specification and prosecution history only compel departure from the
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`plain meaning in two instances: lexicography and disavowal.”). The standards for finding
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`lexicography or disavowal are “exacting.” GE Lighting Sols., 750 F.3d at 1309.
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`To act as his own lexicographer, the patentee must “clearly set forth a definition of the
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`disputed claim term,” and “clearly express an intent to define the term.” Id. (quoting Thorner, 669
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`2 Some cases have characterized other principles of claim construction as “exceptions” to the
`general rule, such as the statutory requirement that a means-plus-function term is construed to
`cover the corresponding structure disclosed in the specification. See, e.g., CCS Fitness, Inc. v.
`Brunswick Corp., 288 F.3d 1359, 1367 (Fed. Cir. 2002).
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`F.3d at 1365); see also Renishaw, 158 F.3d at 1249. The patentee’s lexicography must appear
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`“with reasonable clarity, deliberateness, and precision.” Renishaw, 158 F.3d at 1249. To disavow
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`or disclaim the full scope of a claim term, the patentee’s statements in the specification or
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`prosecution history must amount to a “clear and unmistakable” surrender. Cordis Corp. v. Bos.
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`Sci. Corp., 561 F.3d 1319, 1329 (Fed. Cir. 2009); see also Thorner, 669 F.3d at 1366 (“The
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`patentee may demonstrate intent to deviate from the ordinary and accustomed meaning of a claim
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`term by including in the specification expressions of manifest exclusion or restriction, representing
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`a clear disavowal of claim scope.”). “Where an applicant’s statements are amenable to multiple
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`reasonable interpretations, they cannot be deemed clear and unmistakable.” 3M Innovative Props.
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`Co. v. Tredegar Corp., 725 F.3d 1315, 1326 (Fed. Cir. 2013).
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`III. THE PARTIES’ STIPULATED TERMS
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`
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`The parties agreed to the construction of the following terms in their Joint Supplemental
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`Claim Constructions Brief (Docket No. 205):
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`Claim Term/Phrase
`“customized for a particular location”
`“loosely networked” / “loose network”
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`“GPS integral thereto” / “said GPS”
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`“executable”
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`Agreed Construction
`Plain meaning
`“tolerant of intermittent network connections and
`tolerant of the type of network connection
`available”
`“GPS receiver integral thereto” / “said GPS
`receiver”
`“of, pertaining to, or being a program file that can
`be run” and includes JAVA and markup
`languages (XML, HTML, JSON, etc.)”
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`(Docket No. 205 at 3–4). In view of the parties’ agreement on the proper construction of the
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`identified terms, the Court hereby ADOPTS the parties’ agreed constructions.
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`IV. CONSTRUCTION OF DISPUTED TERMS
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`
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`The parties’ dispute the meaning and scope of five claim terms in the ’748 Patent. The
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`Court addresses these terms individually below.
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`Case 6:18-cv-00407-RWS Document 228 Filed 01/23/23 Page 8 of 18 PageID #: 5332
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`A. “questionnaire”
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`
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`Disputed Term
`“questionnaire”
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`Plaintiff’s Proposal
`“a program or form that
`includes a question or
`statement, which calls for a
`response”
`
`Defendants’ Proposal
`No construction necessary.
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`Alternatively: “a program or
`form that includes a question or
`statement, which calls for a
`response”
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`The parties dispute whether the term “questionnaire” requires construction. Docket No. 205 at 4–
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`5. Defendants argue that the term does not require construction in the context of the ’748 Patent;
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`however, in the alternative, Defendants have stated that they “have no objection to Plaintiff’s
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`proposed construction.” Id. at 4–5 n.5 (citing Docket No. 102). Plaintiff argues that, because
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`Defendants have conceded that they do not object to the Plaintiff’s proposed construction, that the
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`Court should adopt the Plaintiff’s proposed construction. Id. at 4. Further, in its opening brief, the
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`Plaintiff argued that the court in MacroSolve construed the term “questionnaire” to mean “a
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`program or form that includes a question or statement, which calls for a response.” Docket No. 99-
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`2 at 14 (MacroSolve, Inc. v. Antenna Software, Inc. et al, Case No. 6:11-cv-287-MHS-KNM,
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`Docket No. 493 (E.D. Tex. Jan. 21, 2014)) (construing terms in U.S. Patent No. 7,822,816, the
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`parent of the ’748 Patent).
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`Because Defendants do not disagree with the construction adopted by the court in
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`MacroSolve, the Court construes the term “questionnaire” to mean “a program or form that
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`includes a question or statement, which calls for a response.” Thus, for the reasons set forth above,
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`the Court construes the term “questionnaire” to mean “a program or form that includes a
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`question or statement, which calls for a response.”
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`B. “when said loosely networked computer is at said particular location,
`executing said transferred questionnaire on said loosely networked
`computer, thereby collecting responses from the user”
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`Disputed Term
`“when said loosely
`networked computer is at
`said particular location,
`executing said transferred
`questionnaire on said
`loosely networked
`computer, thereby
`collecting responses from
`the user”
`
`Plaintiff’s Proposal
`No construction necessary.
`
`Defendants’ Proposal
`“when the said loosely
`networked computer is at said
`particular location, prompting a
`user via the loosely networked
`computer to input responses to
`the transferred questionnaire
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`The parties dispute whether the disputed phrase requires construction. Docket No. 205 at
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`5–9. Defendants state that they “can now argee that no further construction” is needed for the term
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`“when said loosed networked computer is at said particular location.” Id. at 7. Defendants,
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`however, contend that the remote computing must prompt the user to input responses. Id. at 8–9.
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`The Court finds that the phrase does not require construction because it is unambiguous and is
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`easily understandable by a jury.
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`Defendants originally proposed a construction that required the questionnaire to be
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`executed upon the device “arriving at the location.” Docket No. 102 at 16–20. The specification,
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`however, describes using “handheld computers” (i.e., remote computing devices) in places such
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`as “a stockroom for a manufacturing facility” or a “production floor.” ’748 Patent at 8:18–24.
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`Plaintiff argued that “[s]tockrooms and production floors are not the type of place where the
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`questionnaire would be executed only at the moment the computer is brought into the room or
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`onto the floor.” Docket No. 99 at 16. The Court agrees.
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`To be sure, the specification describes using the claimed methods to transfer patient data
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`from medical providers to insurance companies. ’748 Patent at 11:43–12:53. The medical
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`provider’s computers are equipped with the questionnaires, and the specification states that
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`“medical information can be entered into the form(s) in the system following treatment by the
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`[provider].” Id. at 12:17–19 (emphasis added). This indicates that the questionnaire does not need
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`to be executed the moment the computer enters the medical facility, rather it may be executed after
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`the treatment is performed. Accordingly, to the extent that Defendants argue that a questionnaire
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`must be executed upon arrival, the Court rejects that argument. The Court agrees with Defendants
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`that the execution occurs “when said loosely networked computer is at said particular location,”
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`not before when the computer is at some other location.
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`Regarding the issue of prompting the user, the specification states that “in a preferred
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`embodiment the user will initiate the questionnaire.” Id. at 9:29–30. The specification adds that
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`“the user might be instructed to initiate the questionnaire as soon as he or she pulls into the drive-
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`in lane of a take-out eatery.” Id. at 9:32–34. Accordingly, the intrinsic evidence indicates that the
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`questionnaire is not required to be executed when the remote computing device first arrives at the
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`location, or that the remote computing must prompt the user to input responses.
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`Regarding Defendants’ attempt to redraft “executing” as “prompting a user,” Defendants
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`cite to portions of the specification that include embodiments for “prompting a user.” Docket No.
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`102 at 20–21; Docket No. 205 at 9 (citing ’748 Patent at Abstract, 5:66–6:2, 8:25–28, 9:55–57,
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`10:55–56). The Court finds that these are only examples and do not limit the claims as Defendants
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`contend. Electro Med. Sys. S.A. v. Cooper Life Sci., 34 F.3d 1048, 1054 (Fed. Cir. 1994)
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`(“[A]lthough the specifications may well indicate that certain embodiments are preferred,
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`particular embodiments appearing in a specification will not be read into the claims when the claim
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`language is broader than such embodiments”). These examples do not support Defendants’
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`argument that “the step of ‘executing’” must be “performed by prompting the user to obtain a
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`response.” Docket No. 102 at 21. As discussed above, the specification provides other examples,
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`and also states that “in a preferred embodiment the user will initiate the questionnaire.” ’748 Patent
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`at 9:29–30 (emphasis added). Accordingly, the Court rejects Defendants’ construction.
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`Case 6:18-cv-00407-RWS Document 228 Filed 01/23/23 Page 11 of 18 PageID #: 5335
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`For the reasons set forth above, the phrase “when said loosely networked computer is at
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`said particular location, executing said transferred questionnaire on said loosely networked
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`computer, thereby collecting responses from the user” is given its plain and ordinary
`
`meaning.
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`C. “requests location identifying information”
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`
`
`Disputed Term
`“requests location
`identifying information”
`
`Plaintiff’s Proposal
`No construction necessary.
`
`Defendants’ Proposal
`“requests information identifying
`the user’s location”
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`The parties dispute whether the phrase requires construction. Docket No. 205 at 10–12.
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`Defendants argue that their construction makes clear that the “location” in this claim term is that
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`of the user, not the location to which a user may be traveling. Id. at 11–12. The Court finds that
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`the phrase does not require construction, because it is unambiguous and is easily understandable
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`by a jury. Claim 7 recites that the loosely networked computer has an integral GPS, and that this
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`GPS is used to “automatically provide said location identifying information as a response to said
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`executing questionnaire.” Thus, the “requested location identifying information” is for the loosely
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`networked computer, which includes the GPS, and not the user. This is the plain language of the
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`claim. Accordingly, the Court finds that Defendants have incorrectly inserted the additional
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`limitation that the location must be “the user’s” location.
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`Defendants argue that the “location” cannot be both the user’s location and the “brick and
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`mortar location,” and that their construction resolves ambiguity in the claim. Docket No.102 at 22.
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`Defendants’ argument is unpersuasive and ignores the phrase in the context of the claim. The claim
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`language requires a location, not necessarily the location of a brick-and-mortar business, and not
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`necessarily the location of a user. Instead, the claim requires the location information of the loosely
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`networked computer, which secondarily includes the location of the user if they are at the same
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`location. Indeed, Plaintiff correctly argues that Defendants conceded this point during the claim
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`construction hearing. Docket No. 205 at 10–11 n.15 (citing Docket No. 117 at 62:20–63:14, 65:5–
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`11). Thus, the Court rejects Defendants’ construction because it improperly adds a user’s location
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`limitation.
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`
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`For the reasons set forth above, the phrase “requests location identifying information”
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`is given its plain and ordinary meaning.
`
`D. Order of Steps
`
`Defendants’ Proposal
`Steps must be performed in the
`order claimed
`
`Disputed Term
`Order of Steps
`
`
`
`
`
`Plaintiff’s Proposal
`Steps must be performed in
`order only as dictated by the
`logic of the claim language:
`
`(a) must begin before, but can
`overlap with (b); (b) must
`begin before, but can overlap
`with (c); (d) must overlap with
`(c); (c) and (d) must begin
`before, but can overlap with
`(e); (e) must begin before, but
`can overlap with (f).
`
`The parties dispute what order the steps of Claims 7 must be performed. Docket No. 205
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`at 12–18. The general rule is that method claim steps are not construed to require a specific order.
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`Interactive Gift Express, Inc. v. CompuServe Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2000). This is
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`true unless logic, grammar, or the intrinsic evidence require a narrower construction. Altiris, Inc.
`
`v. Symantec Corp., 318 F.3d 1363, 1369–70 (Fed. Cir. 2003). Plaintiff argues that not all of the
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`steps must be performed in order, and that the steps can overlap. Docket No. 205 at 13 n.20 (citing
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`Docket No. 99 at 21). Defendants originally contended that the step must be performed in the order
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`claimed and cannot overlap. Docket No. 102 at 24. Defendants now argue that the only steps that
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`can overlap are 7(c) and 7(d), as 7(d) requires using the GPS to automatically provide “said
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`location identifying information” “while said transferred questionnaire is executing,” and that
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`execution commences in step 7(c). Docket No. 205 at 18. Defendants contend that allowing for
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`the significant overlapping makes no logical sense and is not supported by the specification. Id.
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`The Court generally agrees with Plaintiff, that once a preceding step begins, the steps can
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`overlap. Defendants’ construction requires the recited questionnaire to be “complete” before
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`preceding to the subsequent steps. This was the same argument defendants made in the
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`MacroSolve case, which was rejected by the court. Document No. 99-2 at 27 (“There is nothing
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`in the claim language that would require the tokens and responses to be sent as a packet as
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`Defendants contend. Such a requirement would be similar to the ‘complete’ requirement that
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`Defendants proposed for ‘questionnaire.’ As previously discussed, this limitation will not be read
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`into the claim.”). With this background, the Court turns to the specific arguments made by the
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`parties in this case.
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`a. Executing the Questionnaire Before the Responsive GPS
`Information
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`Defendants originally argued that the questionnaire must be executed at the remote device
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`before responsive GPS information is entered into the questionnaire. Docket No. 102 at 25. In
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`particular, in Claim 7, step (c) (“executing said transferred questionnaire”) must commence before
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`step (d) (“while said transferred questionnaire is executing, using said GPS to automatically
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`provide said location information as a response to said executing questionnaire”). Id. The Court
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`agrees that the questionnaire must be executed at the remote device before responsive GPS
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`information is entered into the questionnaire.
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`Step (c) of Claim 7 recites “executing said transferred questionnaire on said loosely
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`networked computer” when “said loosely networked computer is at said particular location.” The
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`claim further recites that “while said transferred questionnaire is executing, using said GPS to
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`automatically provide said location identifying information as a response to said executing
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`questionnaire.” Thus, the plain language of the claim recites that the GPS does not provide the
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`location until the questionnaire is initially executed.
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`This is consistent with arguments made by the patent owner in its Response to Defendants’
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`IPR petition. Specifically, the Patent Owner stated the following:
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`In order to acquire location information, the questionnaire (claim 7) and/or the
`tokens in the questionnaire (claims 1 and 20) must be executed to obtain the current
`location of the handheld device and the GPS location information must then be
`automatically inserted and/or obtained in response to the executing questionnaire.
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`Docket No. 99-10 at 15–16) (emphasis added). Similarly, Plaintiff confirmed this ordering in its
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`opening brief. Docket No. 99 at 24 (“Yes, the GPS coordinates are not entered into the
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`questionnaire until the ‘executing’ step begins . . . .”). Accordingly, the Court finds that the
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`questionnaire must be executed at the remote device before responsive GPS information is entered
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`into the questionnaire. Specifically, step (c) must begin before, but can overlap with step (d).
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`b. Further Overlapping of Steps
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`Defendants argue that the steps cannot overlap as a matter of grammar and logic. Docket
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`No. 205 at 16–18. The Court disagrees. This is the same argument the court rejected in
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`MacroSolve. Docket No. 99-2 at 27. Defendants’ construction would require the recited
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`questionnaire to be “complete” before preceding to subsequent steps. Docket No. 102 at 26 (“[T]he
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`specification does not disclose ‘overlapping’ the creation and transmission of a questionnaire by
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`transmitting portions of an incomplete questionnaire before the questionnaire has been
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`completed.”).
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`There is nothing in the claim language that would require the questionnaire and responses
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`to be “complete,” as Defendants contend. In fact, the specification explicitly discloses incremental
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`transfers of the questionnaire. ’748 Patent at 4:28–31 (“It is a further object of the present invention
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`to provide an operating system for a handheld computer wherein programming changes will only
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`necessitate incremental transfers of program instructions.”), 9:14–17 (“According to another
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`preferred arrangement, there is provided a system, substantially as defined above, wherein the
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`questionnaire which is transmitted to the handheld can be incrementally updated on each
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`networked handheld 28, rather than resending the entire questionnaire.”).
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`In a footnote, Defendants previously contended that this corresponds to dependent claim
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`6, which recites additional steps. Docket No. 102 at 26 n.4. Dependent claim 6 does include
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`additional steps, but it also indicates that the questionnaire need not be “complete” before
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`proceeding to the next recited step in the method. Instead, the claim language only requires that
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`the process of creating the questionnaire must begin before subsequent steps are taken.
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`Accordingly, the Court rejects Defendants’ argument that it would be logically impossible to begin
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`the questionnaire before the step of creating it is completed. Contrary to Defendants’ argument, it
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`is logically possible to design parts of the questionnaire, transmit the questionnaire, and then add
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`more questions. Similarly, it would be logically possible to transfer a portion of the responses to
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`a server or central computer, store the responses, and then transfers other portions of the responses
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`to the server or central computer.
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`
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`For the reasons set forth above, the steps of Claim 7 must be performed in the following
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`order: (a) must begin before, but can overlap with (b); (b) must begin before, but can overlap
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`with (c); (c) must begin before, but can overlap with (d) and (e); (e) must begin before, but
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`can overlap with (f).
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