PTAB

IPR2018-00043

Unified Patents Inc v. Fall Line Patents LLC

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1. Case Identification

2. Patent Overview

  • Title: Data Collection from Remote Computing Devices
  • Brief Description: The ’748 patent is directed to a system for collecting data from a remote handheld computing device. The system delivers a device-independent questionnaire to the remote device, allows for offline data entry by storing responses locally, and transmits the collected data back to a server, addressing challenges related to intermittent network connectivity.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 16-19 and 21-22 over the combination of Kari, Darnell, Todd, and Chan.

  • Prior Art Relied Upon: Kari (Patent 6,154,745), Darnell ("HTML 4 Unleashed" printed publication), Todd (Patent 6,380,928), and Chan (Patent 6,381,603).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of these four references teaches every limitation of the challenged claims. The core system was provided by Kari, which disclosed a method where a mobile station (handheld device) establishes communication with a server, receives a "blank form" or "WWW page" (questionnaire), allows a user to enter information, and sends a query message back. Kari also disclosed using GPS to determine location information and the ability to store the form locally, allowing for disconnected operation. To address specific claim limitations not explicitly in Kari, Petitioner layered on the secondary references. Chan was introduced to explicitly teach a handheld computer with an integral GPS receiver and a form that specifically requests GPS coordinates, satisfying the "GPS integral thereto" limitation of claim 19 and the "requesting GPS coordinates" limitation of claim 16. Darnell, an authoritative HTML guide, was used to argue that Kari's "WWW page" would be understood by a POSITA to be built with HTML tags. Petitioner contended these tags meet the proposed construction of "tokens," and that HTML's inherent platform-agnostic nature satisfies the "device independent tokens" limitation. Todd was cited to explicitly teach storing survey responses on a portable device before transmission, particularly when network conditions are poor, strengthening the argument for the "storing...response" limitation. Furthermore, Todd's disclosure of printing reports to summarize survey results was mapped to the "forming a visually perceptible report" limitation of claim 21.
    • Motivation to Combine: The petition asserted clear motivations for a POSITA to combine these teachings. A POSITA would combine Kari and Chan, both addressing location-based queries, to achieve the known benefits of an integrated GPS, such as improved portability and the ability to continuously update location, as taught by Chan. When implementing Kari's web-based form, a POSITA would be motivated to use a standard like HTML and would naturally consult a comprehensive reference like Darnell to do so, leading to a device-independent implementation. Petitioner argued a POSITA would combine Kari with Todd to improve the robustness of the data collection process. Since Kari's system operates in an environment with potentially intermittent connectivity (an issue the '748 patent purports to solve), a POSITA would look to known solutions like Todd's explicit local storage of responses to prevent data loss and improve user experience. Adding Todd's reporting feature was presented as a predictable and desirable extension for analyzing the collected survey data.
    • Expectation of Success: Petitioner argued that a POSITA would have had a high expectation of success. The proposed combination involved the straightforward integration of known, compatible technologies: adding an integral GPS chip to a handheld (Chan), using standard HTML for web forms (Darnell), and implementing local data caching and report generation (Todd). These were all common practices in software and hardware development at the time, and their combination would yield predictable, operable results.

4. Key Claim Construction Positions

  • "GPS integral thereto": The petition argued this term should be construed to mean "GPS equipment integral thereto" (e.g., a GPS receiver chip) rather than the entire Global Positioning System, including satellites. This construction was crucial for asserting that Chan, which discloses a handheld computer with an integrated GPS receiver, teaches the limitation.
  • "token": Petitioner proposed construing "token" as "a distinguishable unit of a program, such as an index, an instruction, or a command." This construction, which Petitioner noted was previously adopted by the Board in an IPR for the parent patent, was argued to be broad enough to encompass the HTML tags described in Darnell, thereby allowing Darnell to supply the "tokenized questionnaire" and "device independent tokens" limitations.
  • "originating computer" / "recipient computer" / "central computer": The petition asserted that these terms, which appear in the claims but not the specification, should be understood to potentially refer to the same single computing device. This interpretation was based on the patent's disclosure and dependent claims (e.g., claim 18 recites the originating and recipient computers are the same). This construction allowed Petitioner to map Kari's single "connection server" to fulfill the roles of all three claimed computers.

5. Relief Requested

  • Petitioner requested that the Board institute an inter partes review and cancel claims 16-19 and 21-22 of the ’748 patent as unpatentable under 35 U.S.C. §103.