Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 20
`Entered: March 28, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`RF CONTROLS, LLC,
`Petitioner,
`
`v.
`
`A-1 PACKAGING SOLUTIONS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2014-015361
`Patent 8,690,057 B2
`_______________
`
`
`
`Before HOWARD B. BLANKENSHIP, BRYAN F. MOORE, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`1 IPR2015-00119 has been consolidated with this case. All citations are to
`the IPR2014-01536 consolidated record unless otherwise indicated.
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 20
`Entered: March 28, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`RF CONTROLS, LLC,
`Petitioner,
`
`v.
`
`A-1 PACKAGING SOLUTIONS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2014-015361
`Patent 8,690,057 B2
`_______________
`
`
`
`Before HOWARD B. BLANKENSHIP, BRYAN F. MOORE, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`1 IPR2015-00119 has been consolidated with this case. All citations are to
`the IPR2014-01536 consolidated record unless otherwise indicated.
`
`
`
`
`
`IPR2014-01536
`Patent 8,690,057 B2
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`I. INTRODUCTION
`RF Controls, LLC (“Petitioner”) filed a Petition (Paper 4, Corrected
`Petition (“Pet.”)) to institute an inter partes review of claims 1–16 (the
`“challenged claims”) of U.S. Patent No. 8,690,057 B2 (Ex. 1001, “the ’057
`patent”). See 35 U.S.C. §§ 311–319. A-1 Packaging Solutions, Inc. (“Patent
`Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”). RF
`Controls, LLC (“Petitioner”) also filed a second Petition (IPR2015-00119,
`Paper 1, Petition (“Second Pet.”)) to institute an inter partes review of
`claims 17–30 (the “challenged claims”) of the ’057 patent.” A-1 Packaging
`Solutions, Inc. (“Patent Owner”) filed a Preliminary Response to the Second
`Petition (IPR2015-00119, Paper 6 (“Second Prelim. Resp.”)). We
`determined Petitioner had established a reasonable likelihood that it would
`prevail in showing the unpatentability of at least one of the challenged
`claims in each Petition. We instituted an inter partes review as to claims 1,
`17, and 27. Paper 10 (“Dec. on Inst.”); Paper 15 (“Second Dec. on Inst.”).
`We declined to institute an inter partes review as to claims 2–16, 18–26, and
`28–30. Id. We also exercised our authority under 35 U.S.C. § 315(d) to
`consolidate the IPR2015-00119 proceeding and the proceeding in
`IPR2014-01536 as one trial. Second Dec. on Inst. 21.
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 16 (“PO Resp.”)) and Petitioner filed a Reply (Paper 17
`(“Pet. Reply”)). The parties did not ultimately request an oral hearing.
`Papers 17, 19.
`The Board has jurisdiction under 35 U.S.C. § 6(c). This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we determine that Petitioner has shown by
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`a preponderance of the evidence that claims 1, 17, and 27 of the ’057 patent
`are unpatentable.
`
`II. BACKGROUND
`A. Related Matters
`The parties have not identified any related proceedings.
`B. The ’057 Patent (Ex. 1001)
`The ’057 patent relates to a process management system that uses a
`radio frequency identification (RFID) detection system in the form of, for
`example, a phased array antenna based RFID detection system to track and
`manage material storage and flow in a manufacturing process or plant.
`Ex. 1001, Abstract. A block diagram of an exemplary process management
`system is shown in Figure 1 of the ’057 patent, reproduced below.
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`As illustrated in Figure 1, above:
`[I]nventory and process management or tracking system 10
`include[s] a command system 12 connected to an RFID detection
`and tracking system that includes a network of antenna systems
`14 (which may be for example, one or more electronically
`steerable phased array antenna systems each having multiple
`antenna elements 24) connected to a processor (not shown) that
`directs or operates the antennas or elements 24 . . . and performs
`RFID detection and tracking.
`
`Id. at 13:66–14:7. “During operation, material inputs and material outputs at
`each stage or region of the manufacturing process 19 are tagged with RFID
`tags 22 for identification and tracking.” Id. at 14:25–28. “The antenna
`systems 14 . . . are used to detect and track the location and movement of the
`RFID tagged material inputs and material outputs and use this tracking
`information to manage the manufacturing process 19 using, for example, the
`controllers 16.” Id. at 14:28–36.
`C. Illustrative Claim
`Of the challenged claims, claim 1 is independent. Claim 1,
`reproduced below, is illustrative of the claimed subject matter:
`1.
`An inventory tracking system for use in tracking
`placement of physical items within an inventory tracking
`region, comprising:
`a radio frequency tag detection system including:
`a plurality of radio frequency antennas disposed in a
`spaced apart manner within the inventory tracking
`region; and
`a detection controller coupled to the plurality of radio
`frequency antennas, the detection controller
`including a beam-steering control system that
`controls the operation of each of the radio
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`frequency antennas, wherein one of the plurality of
`radio frequency antennas uses a beam to scan a
`portion of the inventory tracking region to detect a
`current physical location of one or more radio
`frequency tags disposed in a scanned portion of the
`inventory tracking region, wherein the current
`physical location corresponds to a position defined
`by two coordinate units in a multidimensional
`coordinate system and the value of each of the two
`coordinate units is determined by the one of the
`plurality of radio frequency antennas, and wherein
`the detection controller generates indications of the
`one or more detected radio frequency tags and the
`current physical locations of the one or more
`detected radio frequency tags in the scanned
`portion within the inventory tracking region; and
`a tracking system coupled to the radio frequency tag detection
`system to receive the indications of the one or more
`detected radio frequency tags and the current physical
`locations of the one or more detected radio frequency
`tags in the scanned portion within the inventory tracking
`region, the tracking system including:
`a memory for storing inventory item information for each
`of a plurality of inventory items, the inventory
`item information for each of the plurality of
`inventory items including an inventory item radio
`frequency tag identifier, inventory item
`identification information defining the identity of
`the inventory item, and an indication of the current
`physical location of the inventory item within the
`inventory tracking region; and
`an access system that accesses the memory and provides
`at least a subset of the inventory item information
`for one or more of the inventory items to a user for
`determining the current physical location of the
`one or more of the inventory items within the
`inventory tracking region,
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`wherein the tracking system updates the indication of the
`current physical location of at least one particular
`inventory item within the inventory tracking region as
`stored in the memory for the at least one particular
`inventory item based on the indication of the current
`physical location of the one or more detected radio
`frequency tags for at the least one particular inventory
`item as produced by the detection controller.
`D. Evidence Relied Upon
`Petitioner’s patentability challenge is based on the following
`references, either directly or as allegedly incorporated by reference:
`
`Reference
`Hofer
`
`Patent/Printed Publication
`US 8,493,182 B2
`
`Bloy
`
`WO 2009/035723 A1
`
`Exhibit
`1007
`
`1008
`
`
`
`E. Asserted Ground of Unpatentability
`Petitioner challenges the patentability of the ’057 patent claims based
`on the following ground:
`
`Reference
`Hofer
`
`
`
`
`
`Basis
`§ 102
`
`Claims Challenged
`1, 17, and 27
`
`III. CLAIM CONSTRUCTION
`Claims of an unexpired patent are interpreted using the broadest
`reasonable construction in light of the specification of the patent. See 37
`C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., 793 F.3d 1268,
`1275 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v.
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`Lee, 136 S. Ct. 890 (mem.) (2016). Petitioner and Patent Owner offer
`respective constructions for several claim terms. See Pet. 5–13; Prelim.
`Resp. 6–11. For purposes of this decision, we determine the only claim
`language requiring some degree of express construction is the phrase
`encompassing the term “antenna,” recited in independent claim 1.
`In the Decision to Institute, we did not find that a specific definition of
`antenna was necessary. Dec. on Inst. 7–10. However, we clarified that one
`of ordinary skill in the art would understand that “one of the plurality of
`radio frequency antennas” may refer to a single antenna such as a phase
`array antenna. Id. at 9–10. The parties have not presented any further
`argument or evidence on this point. We adopt this determination and the
`analysis at pages 7–10 of the Decision to Institute into this Final Decision.
`
`IV. ANALYSIS
`A. Anticipation of Claim 1 by Hofer
`1. Hofer (Ex. 1007)
`Hofer discloses that each steerable phased array antenna module
`comprises an “RFID reader module 16[, which] directs an interrogation
`signal to and receives corresponding signals from the steerable phased array
`antenna 18” as well as a “beam steering unit 12 under the control of a
`location processor 14.” Ex. 1007, 2:46–50, 2:50–57. Hofer further discloses
`that “[a]n output 36 of the location processor comprises the tag identifier,
`time stamp and three dimensional location of the associated RFID tag.”
`Ex. 1007, 3:15–17. “Hofer generally describes that the steerable phased
`array antenna system scans a volume, detects RFID tags, and gathers data
`sets associated with each detected RFID which are processed by a location
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`processor to derive the three-dimensional position of each detected RFID
`tag.” Pet. 25–26 (emphasis deleted) (citing Ex. 1007, 3:8–12, 30–33, 44–49,
`56–58). “Hofer further discloses that the data sets include the values of the
`two angular dimensions of a polar coordinate system (phi and theta), which
`are provided by the beam steering unit, and the value of the third coordinate
`(distance or range of the tag from the antenna) is derived from other data in
`the data set using a phase ranging algorithm.” Id. at 26 (emphases deleted)
`(citing Ex. 1007, 3:8–17, 30–33, 4:1–5:44). Hofer further discloses that
`"[a]n output 36 of the location processor comprises the tag identifier, time
`stamp and three dimensional location of the associated RPID tag.”
`Id. (citing Ex. 1007, 3:15–17).
`Hofer purports to incorporate by reference the tracking system
`described in Bloy (Ex. 1008). Ex. 1007, 1:11–29. “To incorporate material
`by reference, the host document must identify with detailed particularity
`what specific material it incorporates and clearly indicate where that
`material is found in the various documents.” Advanced Display Sys., Inc. v.
`Kent State Univ., 212 F.3d 1272, 1282–83 (Fed. Cir. 2000). Whether a
`patent describes material to be incorporated by reference with sufficient
`particularity is assessed from the perspective of a person of ordinary skill in
`the art. Id. at 1283. Hofer recites:
`Commonly owned PCT Patent Application Publication
`WO 2009/035723, titled “Radio Frequency Signal Acquisition
`and Source Location System” by Bloy et al published Mar. 19,
`2009, hereby incorporated by reference in its entirety, discloses
`a real-time RFID location system that utilizes an Intelligent
`Tracking and Control System (ITCS) coupled to one or more
`intelligent scanning antenna Signal Acquisition and Source
`Location (SASL) modules (an ITCS installation) to enable the
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`accurate 3-dimensional location of RFID tags arbitrarily placed
`and/or moving through a defined target area (volume). Touch
`free Identification, location and/or tracking systems such as the
`ITCS object
`identification
`systems disclosed
`in WO
`2009/035723 enable the identification and location of tags and/or
`tagged
`items, attributing significance
`to the appearance,
`disappearance, location or co-location of tags or tagged items and
`thereby facilitating better business process decisions.
`
`Ex. 1007, 1:11–29. Thus, Hofer discloses aspects of Bloy relied on by
`Petitioner are specifically incorporated. Given this text from Hofer, we find
`the citations to Bloy relied on by Petitioner are properly incorporated by
`reference.
`
`2. Analysis
`Petitioner provides citations, as detailed above, to Hofer that
`correspond to the radio frequency antennas and detection controller recited
`in claim 1. Pet. 25–26.
`Patent Owner argued in its Preliminary Response that “[n]either Hofer
`nor Bloy is directed towards inventory management using RFID tags, or
`even inventory management of any kind, but instead deal with general
`methods of locating RFID tags.” Prelim. Resp. 21. To anticipate, a prior art
`reference need not come from the same field or have the same intended
`function as the patent-in-suit. In re Schreiber, 128 F.3d 1473, 1477 (Fed.
`Cir. 1997). In Schreiber, the Federal Circuit held that prior art disclosing a
`container with a conical top for dispensing liquids anticipated a patent for a
`container with a conical top for dispensing popcorn. Id. The court observed
`that “[i]t is well settled that the recitation of a new intended use for an old
`product does not make a claim to that old product patentable.” Id. We
`stated in our Decision to Institute, with respect to inventory tracking, the
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`body of the claim refers only to an “inventory tracking region” (an area
`where tag detection occurs) and an “inventory item” with associated
`“inventory item information” (data to be stored and displayed).
`Additionally, Bloy does state that the invention provides tracking that may
`be useful to identify movement related to inventory control. Ex. 1008, 21–
`22.2 Thus, in deciding to institute, we determined that Hofer (with Bloy) is
`directed at least in part to inventory management.
`Intended Use
`i.
`Patent Owner now argues that “[e]ven assuming that the ‘inventory
`tracking’ limitations recite an intended use, these limitations are closely tied
`to structure in the claims, entitling them to patentable weight.” PO Resp. 5.
`Patent Owner further argues:
`the “inventory tracking” limitations describe aspects of tracking
`that are particular to inventory (as opposed to tracking other
`things) and, importantly, those limitations are intertwined with
`multiple structural components of the claims, and the functions of
`those structural components—such as “memory” (which stores
`inventory tracking information), the “access system” (which
`accesses the inventory tracking information), and the “tracking
`system” (which updates the inventory information in memory).
`These functions, collectively, describe part of what makes an
`inventory tracking system different: that it tracks not only the
`location of an RFID tag, but the identity/quantity/etc. of the items
`the RFID tag represents.
`
`
`Id. at 6.
`
`
`2 The Petition cites to the internal page numbers of Bloy rather than the page
`numbers added to Ex. 1008. To avoid confusion, we cite to the internal page
`numbers of Bloy in this Final Decision.
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`The relevant claim language is “inventory tracking region” or
`“inventory region.” Claim 1 recites in the preamble “[a]n inventory tracking
`system for use in tracking placement of physical items within an inventory
`tracking region” and claims 17 and 27 recite in the preamble “[a] method of
`tracking inventory within an inventory region.” “Whether to treat a preamble
`as a limitation is a determination ‘resolved only on review of the
`entire[] . . . patent to gain an understanding of what the inventors actually
`invented and intended to encompass by the claim.’” Catalina Mktg. Int’l v.
`Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Corning
`Glass Works v. Sumitomo Electric U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir.
`1989)). A preamble is not limiting where a structurally complete invention is
`defined in the claim body and the preamble only states a purpose or intended
`use for the invention. Id. The preambles of claims 1, 17, and 27 recite where
`the apparatus and system are to be used. Also, the bodies of claims 1, 17, and
`27 define a structurally complete apparatus or system.
`One guidepost for determining the effect of a preamble on claim
`scope is whether the preamble language provides antecedent basis for any
`limitation in the body of the claim. Id. The bodies of claims 1, 17, and 27
`specify that the “inventory tracking region” or “inventory region” is the
`place in which the RFID tag is detected and tracked. But, other than that,
`the claims do not rely on the preamble for structure. Thus, we find that the
`“inventory tracking region” of claim 1 and “inventory region” of claims 17
`and 27, in the preamble and the body of those claims, are an intended use in
`those claims and give them no patentable weight. See Schreiber, 128 F.3d at
`1477.
`Patent Owner argues that, in another matter:
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`the Board gave patentable weight to a claim limitation directed
`to a control system, “operable to modify the drive signal and
`thereby maintain oscillation of the flowtube,” holding that the
`phrase “thereby maintain oscillation of the flowtube” required
`that the control system have the appropriate structure to modify
`the drive signal and achieve the claimed function.
`
`PO Resp. 6 (citing Micro Motion Inc. v. Schneider Electric SA, IPR2014-
`00392, (Dec. on Inst.) Paper 13, 12 (PTAB Aug. 4, 2014)). Thus, according
`to Patent Owner, “[j]ust as a control system requires an appropriate structure
`to maintain oscillation in a flowtube, the memory, access system, and
`detection controller have an associated physical structure to facilitate
`updating of inventory item information.” Id. at 7. In this case, however, the
`claim calls out the structure required to track the item inventory information
`in the inventory tracking region, e.g. the antennas arranged as claimed and
`RFID tags associated with inventory items.
`Patent Owner argues further that:
`These inventory tracking features are not merely an intended use
`of an RFID tracking system, but are functional limitations
`describing interoperability between the memory, access system,
`and tracking system structures. These limitations, in other words,
`describe how an RFID inventory tracking system works
`differently from non-inventory RFID tracking systems.
`
`
`PO Resp. 8–9. We disagree. For example, claim 1 describes storing and
`accessing data that is displayed to a user. Nothing in the claim points out
`any aspect of the manipulation of this data that is unique to “inventory” data
`versus any other data that would be stored and accessed. As to the tracking
`aspect of the claim, the claim explicitly states that it is the RFID tag that is
`tracked, not the inventory item. Nothing in the Specification suggests that
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`tracking an RFID tag attached to an inventory item as embodied in the
`invention is different in any material way to tracking any other kind of item
`with an RFID tag attached.
`Non-Functional Descriptive Material
`ii.
`We also determine that the recitation of “item inventory information”
`is non-functional descriptive material to the extent that it means anything
`other than the identity of an item. That is, we find that while the claim
`requires information about an item associated with an RFID tag, there is no
`use of the information in the claim the requires the information be inventory
`related. Patent Owner states that “[t]he inventory tracking system of claims
`1, 17, and 27, on the other hand, not only tracks the location of the items, but
`also manages information about the inventory, like what it is, or how long it
`has been on the shelf.” PO Resp. 5. However, independent claims 1, 17,
`and 27 do not specify that the information must include what the inventory
`item is, or how long it has been on the shelf.
`Below, we will discuss each of the limitations reciting “item inventory
`information.” Claim 1 recites “a memory for storing . . . inventory item
`information defining the identity of the inventory item.” Claim 1 further
`recites “an access system that accesses the memory and provides at least a
`subset of the inventory item information for one or more of the inventory
`items to a user.” Thus, Claim 1 does not recite performing any new function
`or action based upon the fact that the item is an inventory item to achieve a
`desired result. As such, the limitation of claim 1 to “item inventory
`information” is directed to non-functional descriptive material, which is not
`entitled to weight in the patentability analysis. See Ex parte Curry, 84
`USPQ2d 1272, 1274 (BPAI 2005) (informative) (“wellness-related” data in
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`databases and communicated on distributed network did not functionally
`change either the data storage system or the communication system used in
`the claimed method), aff’d, No. 06-1003 (Fed. Cir. June 12, 2006).
`“[N]onfunctional descriptive material cannot lend patentability to an
`invention that would have otherwise been [invalidated] by the prior art.” Ex
`parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative) (citing In
`re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004)), aff’d, 191 Fed. Appx. 959
`(Fed. Cir. 2006); see Ex parte Nehls, 88 USPQ2d 1883, 1887–90 (BPAI
`2008) (precedential).
`The first step in determining whether a claim limitation is non-
`functional descriptive material (i.e. printed matter) is finding that the
`“printed matter [is] matter claimed for what it communicates.” In re
`Distefano, 808 F.3d 845, 850 (Fed. Cir. 2015). Here, the inventory item
`information is claimed for its communication of information about the item
`of inventory.
`The next step is determining “if the claimed informational content has
`a functional or structural relation to the substrate.” Id. Here, the inventory
`aspect of the item inventory information is not related to claimed
`computerized tracking system. See generally MPEP § 2111.05, 9th ed., Rev.
`7, Nov. 2012 (“[W]here the claim as a whole is directed [to] conveying a
`message or meaning to a human reader independent of the intended
`computer system, and/or the computer-readable medium merely serves as a
`support for information or data, no functional relationship exists.”).
`Finally, claim 1 recites “the tracking system updates the indication of
`the current physical location of at least one particular inventory item . . .
`based on the indication of the current physical location of the one or more
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`detected radio frequency tags for at the least one particular inventory item as
`produced by the detection controller.” For this limitation, it is the RFID tag
`that has a functional relationship to the limitations of the claim, i.e. the
`location of the inventory item is commensurate with the location of the
`RFID tag such that it is the RFID tag’s location which is detected and
`updated in claim 1. Thus, the inventory item itself and the fact that it is
`inventory as opposed to any other item does not have a functional
`relationship to the tracking system or any other part of claim 1.
`Claims 17 and 27 contain substantially similar limitations as discussed
`above. Thus, for the reasons stated above, the limitation of claims 17 and 27
`to “item inventory information” is directed to non-functional descriptive
`material to the extent that it means anything other than the identity of an
`item, which is not entitled to weight in the patentability analysis.
`Patent Owner cites to In re Lowry for the proposition that “[m]ore
`
`than mere abstraction … the data structures provide tangible benefits: data
`stored in accordance with the claimed data structures are more easily
`accessed, stored, and erased…The Board is not at liberty to ignore such
`limitations.” PO Resp. 8–9 (citing In re Lowry, 32 F.3d 1579, 1583–84
`(Fed. Cir. 1994)). In Lowry, the Federal Circuit pointed out that “the
`[claimed] data structures [are not] analogous to printed matter. Lowry’s
`ADOs do not represent merely underlying data in a database. ADOs contain
`both information used by application programs and information regarding
`their physical interrelationships within a memory.” 32 F.3d at at 1583.
`Thus, the nature of relationship between the data structures and the memory
`in Lowry created a functional relationship between the data structure and the
`computer. See id. Here the inventory item information is data of not
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`specific structure that is manipulated by generic computer functions of
`storing and displaying to a user.
`Patent Owner analogizes this case to Fujian Newland Computer Co.,
`Ltd. v. Hand Held Products, Inc., IPR2013-00595, which involved a bar
`code. PO Resp. 10 (citing Fuijan, IPR2013-00595, Paper 14, 21 (PTAB
`Feb. 28, 2014)). Patent Owner suggests by this analogy that item inventory
`information is functional in the way a bar code is functional. Petitioner
`responds that “a bar code recognition module must have a specific structure,
`such as circuitry or program logic to recognize and distinguish bar code
`symbols from other descriptive material in image data.” Pet. Reply 10. We
`agree with Petitioner. Bar codes are more like the data structures of Lowry.
`In fact, bar codes are also more analogous to the RFID tag in this case,
`which must have a particular structure in order to be read by the claimed
`antenna. Thus, we do not find that Fuijan supports Patent Owner’s position
`with respect to the functionality of the “item inventory information” of claim
`1.
`
`
`Patent Owner further argues that:
`if [item inventory information] is ignored as merely descriptive,
`other limitations in the claim become confused and unworkable.
`For example, the “access system” limitation must “access[] the
`memory” and provide “a subset of the [item inventory
`information].” If “inventory item information” is not limiting,
`then what subset is the access system providing?
`
`PO Resp. 10–11. Patent Owner misses the point. Because item inventory
`information is non-limiting, any subset of item inventory information is also
`non-limiting. Additionally, the claim recites “at least” a subset, thus more
`than a subset satisfies the claim limitation. Patent Owner’s question
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`assumes that all elements of the claim must be found to be limiting. That is
`not the case.
`
`Patent Owner further argues that:
`“the identity of the inventory item”—has nothing to do with the
`RFID tag. Rather, the “identity of the inventory item” is an
`important limitation that defines the invention of inventory
`tracking over other kinds of RFID tracking. In an inventory
`tracking system, it is not enough to simply know the physical
`location of the RFID tag. The system must also know the identity
`of the goods the RFID tag represents.
`
`PO Resp. 10. We disagree. While the identity of the item associated with
`the RFID tag is necessary to know what specific item is being tracked, there
`is no structural significance to the fact that the item is inventory versus any
`other kind of item. As noted above, we find that the inventory aspect of item
`inventory information has no patentable weight.
`We find that the inventory aspect of “inventory item identification
`information defining the identity of the inventory item, and an indication of
`the current physical location of the inventory item”—upon which the generic
`computer operations are performed—is non-functional descriptive material
`related to the RFID tag, and lacks patentable weight. Whether the recited
`“inventory item information” is related to an item of inventory does not
`affect the operations of the “access” or “tracking” limitations, rather the
`information is simply stored and provided to a user. See Ngai, 367 F.3d at
`1339; In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (holding when
`descriptive material is not functionally related to the substrate, the
`descriptive material will not distinguish the invention from the prior art in
`terms of patentability). It is the RFID tag that has a functional relationship
`
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`to the limitations of the claim, i.e. the location of the inventory item is
`commensurate with the location of the RFID tag such that it is the RFID
`tag’s location which is detected and updated in claim 1. Claims 1, 17, and
`27 do not use the item information for any purpose specific to inventory
`other than storing and presenting the item information to the user. Thus, we
`find that item inventory information is simply data representing some
`information about an item.
`iii. Hofer Is Enabled
`Patent Owner argues “Hofer/Bloy does not describe any features of
`inventory management using RFID tags, let alone describe them in sufficient
`detail to enable a person of ordinary skill in the art to carry out the claimed
`invention.” PO Resp. 11 (citations omitted). Patent Owner further argues
`“Hofer/Bloy provides, in just one sentence, a passing reference to ‘inventory
`control.’ That sentence states, ‘[t]he invention provides direction and
`velocity tracking, useful for example to identify movement of targets into
`areas where additional actions may be desired, such as user access, process
`control, inventory control and/or theft prevention.’” PO Resp. 11–12 (citing
`Ex. 1008, 21–22). Finally, Patent Owner argues:
`Hofer/Bloy says nothing about . . . “inventory item information.”
`Without knowing information about the inventory in addition to
`the physical locations of the inventory itself, a user attempting to
`manage inventory with the Hofer/Bloy system is left with a
`disorganized pool of tag locations and no link between the tags
`and what they are attached to.
`
`Id. at 13.
`When a party asserts that a prior art patent anticipates specific patent
`claims, the party enjoys a presumption that the anticipating disclosure also
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`enables the claimed invention. Impax Labs., v. Aventis Pharms. Inc., 468
`F.3d 1366, 1382 (Fed. Cir. 2006). However, the presumption can be
`overcome with persuasive evidence showing that the prior art patent does
`not enable the claimed invention. Id.
`Petitioner points out that Bloy discusses inventory control in more
`than just one sentence. Pet. Reply. 13. Bloy recites the use of RFID tags in
`connection with “inventory feedback and control,” such as by tracking “a
`pallet load of materials individually marked with RFID tags entering or
`leaving a warehouse.” Ex. 1008, 4. Bloy, in describing previous entry/exit
`systems, further recites that “[previous systems do] not provide a specific
`location and/or direction of travel, other than by transient association
`between the tags or tagged items and the location of the reader at the time of
`interrogation” and thus, the disclosure of Bloy overcomes “a collective
`mindset in the signal acquisition and source location technology space that
`RFID technology in particular is applicable only with respect to gateway
`type exit/entry and or general presence detection and reporting function(s).”
`Id. We recognize the presumption of enablement and Bloy’s explicit
`description of associating inventory with a location. Thus, even if the item
`inventory information and at least a subset thereof were given patentable
`weight, we find that Bloy, and thus Hofer, is enabled for the purpose of
`anticipation.
`
`Anticipation
`iv.
`Petitioner provides citations to Bloy that allegedly disclose the
`tracking system and access system limitations recited in claims 1, 17, and
`27, along with explanations of those citations. Pet. 24–26, App. C, 7–10;
`Second Pet. 25–30, App. C, 1–8, 12–14. As explained further below, we
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`IPR2014-
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