IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`In the Inter Partes Review of:
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`U.S. Patent No. 8,944,337
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`Filed: October 22, 2013
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`Issued: February 3, 2015
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`Inventor(s): Joe Mullis, Sheshi
`Nyalamadugu
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`Assignee: Neology, Inc.
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`Title: RFID Switch Tag
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`Mail Stop Inter Partes Review
`Commissions for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Panel: To Be Assigned
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`PETITION FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.100
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`In the Inter Partes Review of:
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`
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`U.S. Patent No. 8,944,337
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`Filed: October 22, 2013
`
`Issued: February 3, 2015
`
`Inventor(s): Joe Mullis, Sheshi
`Nyalamadugu
`
`Assignee: Neology, Inc.
`
`Title: RFID Switch Tag
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`Mail Stop Inter Partes Review
`Commissions for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Panel: To Be Assigned
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`PETITION FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.100
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`TABLE OF CONTENTS
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`I.
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`MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8(a)(1) ............ 1
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`A.
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`B.
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`C.
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`37 C.F.R. § 42.8(b)(1): Real Party-In-Interest ...................................... 1
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`37 C.F.R. § 42.8(b)(2): Related Matters ............................................... 1
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`37 C.F.R. § 42.8(b)(3) and (4): Lead and Back-Up Counsel and
`Service Information ............................................................................... 1
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`II.
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`PAYMENT OF FEES PURSUANT TO 37 C.F.R. § 42.103 ......................... 2
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`III. GROUNDS FOR STANDING PURSUANT TO 37 C.F.R.
`§ 42.104(a) ....................................................................................................... 2
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`IV.
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`37 C.F.R. § 42.104(b): IDENTIFICATION OF CHALLENGE .................... 3
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`A.
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`B.
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`C.
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`D.
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`E.
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`37 C.F.R. § 42.104(b)(1): Claim for Which IPR is Requested ............. 3
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`37 C.F.R. § 42.104(b)(2): The Specific Art and Statutory
`Ground(s) on Which the Challenge is Based ........................................ 3
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`37 C.F.R. § 42.104(b)(3): Claim Construction ..................................... 4
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`37 C.F.R. § 42.104(b)(4): How the Claim is Unpatentable .................. 5
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`37 C.F.R. § 42.104(b)(5): Evidence Supporting Challenge .................. 5
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`V.
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`THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE OF THE CHALLENGED CLAIMS IS UNPATENTABLE ................. 6
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`A. Description of the Alleged Invention of the ’337 Patent and
`Background of the Technology ............................................................. 6
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`B.
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`C.
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`D.
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`Summary of the Prosecution History of the ’337 Patent .................... 13
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`Summary of Unpatentability Arguments ............................................ 14
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`Claim-by-Claim Explanation of Grounds for Unpatentability ........... 19
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`Ground 1: Atherton Anticipates Claims 1-6, and 8 ......................... 19
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`Ground 2: Kubo Anticipates Claims 1-4 and 6-8 ............................ 31
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`i
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`Ground 3:
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`Janke Anticipates Claims 1-4, 7 and 8 ........................... 45
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`Ground 4: Atherton in View of Kubo and/or Roesner Renders
`Claims 1-9 Obvious ........................................................ 54
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`Ground 5: Kubo in View of Roesner Renders Claims 8-9
`Obvious ........................................................................... 73
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`E.
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`F.
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`The Asserted Grounds of Unpatentability are Not Cumulative
`or Redundant ....................................................................................... 78
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`Secondary Considerations of Non-Obviousness ................................. 79
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`VI. CONCLUSION .............................................................................................. 80
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`ii
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`Petition for Inter Partes Review of U.S. Patent No. 8,944,337
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`Kapsch TrafficCom IVHS Inc. (“Kapsch”) requests inter partes review
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`(“IPR”) of Claims 1-9 of U.S. Patent No. 8,944,337 (“the ’337 patent”) (Ex. 1004).
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`I. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8(a)(1)
`Mandatory notices identified in 37 C.F.R. § 42.8(b) are provided below.
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`37 C.F.R. § 42.8(b)(1): Real Party-In-Interest
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`A.
`Kapsch as well as Kapsch TrafficCom Holding Corp., Kapsch TrafficCom
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`Holding II US Corp., Kapsch TrafficCom B.V., and Kapsch TrafficCom AG are
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`the real parties-in-interest for Petitioner.
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`37 C.F.R. § 42.8(b)(2): Related Matters
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`B.
`Kapsch is not aware of any judicial or administrative matter that would
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`affect, or be affected by, a decision in this proceeding.
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`C.
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`37 C.F.R. § 42.8(b)(3) and (4): Lead and Back-Up Counsel and
`Service Information
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`Kapsch provides the following designation of counsel:
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`1
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`Petition for Inter Partes Review of U.S. Patent No. 8,944,337
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`Lead Counsel
`Gregg F. LoCascio, P.C. (Reg. No.
`55,396)
`gregg.locascio@kirkland.com
`Postal and Hand-Delivery Address:
`KIRKLAND & ELLIS LLP
`655 Fifteenth Street, N.W.
`Washington, D.C. 20005
`Telephone: (202) 879-5000
`Fax: (202) 879-5200
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`Back-up Counsel
`Anders P. Fjellstedt (Reg. No. 61 ,311)
`anders.fjellstedt@kirkland.com
`Postal and Hand-Delivea Address:
`KIRKLAND & ELLIS LLP
`655 Fifteenth Street, N.W.
`Washington, D.C. 20005
`Telephone: (202) 879-5000
`Fax: (202) 879-5200
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`Nathan S. Mammen (Reg. No. 54,892)
`nathan.mammen@kirkland.com
`Postal and Hand-Delivea Address:
`KIRKLAND & ELLIS LLP
`655 Fifteenth Street, N.W.
`Washington, D.C. 20005
`Telephone: (202) 879-5000
`Fax: (202) 879-5200
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`A Power of Attorney accompames this Petition pursuant to 37 C.F.R.
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`§ 42.1 O(b ). Kapsch
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`consents
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`to
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`electronic
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`service
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`by
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`at
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`Kapsch _ IPR _ Service@kirkland. com.
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`II.
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`PAYMENT OF FEES PURSUANT TO 37 C.F.R. § 42.103
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`Review of nine (9) claims is requested. The undersigned authorizes the
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`Office to charge fees set forth in 37 C.F.R. § 42.15(a) for this Petition, and any
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`additional fees that may be due in connection with this Petition, to Deposit
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`Account No. 506092.
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`ill. GROUNDS FOR STANDING PURSUANT TO 37 C.F.R. § 42.104(A)
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`Kapsch certifies that the ' 337 patent is available for IPR, and Kapsch is not
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`2
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`Petition for Inter Partes Review of U.S. Patent No. 8,944,337
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`barred or estopped from requesting IPR on the asserted grounds. Kapsch certifies
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`that: (1) it does not own the ’337 patent; (2) it (or any real party-in-interest) has not
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`filed a civil action challenging the validity of any claim of the ’337 patent; (3) the
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`estoppel provisions of 35 U.S.C. § 315(e)(1) do not prohibit this IPR; and (4) this
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`Petition is filed after the ’337 patent was granted.
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`IV. 37 C.F.R. § 42.104(B): IDENTIFICATION OF CHALLENGE
`A.
`37 C.F.R. § 42.104(b)(1): Claim for Which IPR is Requested
`Kapsch requests IPR of Claims 1–9 (“Challenged Claims”), and that the
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`Challenged Claims be found unpatentable.
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`B.
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`37 C.F.R. § 42.104(b)(2): The Specific Art and Statutory
`Ground(s) on Which the Challenge is Based
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`IPR of the Challenged Claims is requested in view of the following:
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`• PCT International Application WO 2008/074050 (“Atherton”), published
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`June 26, 2008 (Ex. 1006), prior art under 35 U.S.C. § 102(b)1;
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`• U.S. Pat. No 7,460,018 (“Kubo”), issued December 2, 2008 (Ex. 1007),
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`prior art under 35 U.S.C. § 102(b);
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`• U.S. Pat. Publication No. 2007/0290858 (“Janke”), published December
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`20, 2007 (Ex. 1008), is prior art under 35 U.S.C. § 102(b); and
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`1
`Cites to 35 U.S.C. §§ 102 and 103 are to the pre-AIA versions applicable
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`here.
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`3
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`Petition for Inter Partes Review of U.S. Patent No. 8,944,337
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`• U.S. Pat. Publication No. 2010/0302012
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`("Roesner"), published
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`December 2, 2010 (Ex. 1009), prior art under 35 U.S.C. § 102(e).
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`Ground
`1
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`Proposed Statutory Re.iections for the '337 patent
`Claims 1-6 and 8 are anticipated under § 102 by Atherton.
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`2
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`3
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`4
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`5
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`Claims 1-4 and 6-8 are anticipated under § 102 by Kubo.
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`Claims 1-4, 7 and 8 are anticipated under § 102 by Janke.
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`Atherton in view of Kubo and/or Roesner renders Claims 1-9 obvious
`under § 103.
`Kubo in view of Roesner renders Claims 8-9 obvious under § 103.
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`C.
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`37 C.F.R. § 42.104(b)(3): Claim Construction
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`A claim in IPR is given the broadest reasonable interpretation in light of the
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`specification to one having ordinary skill in the art. 37 C.F.R. § 42.100(b).
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`"booster antenna"
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`Under the broadest reasonable interpretation, "booster antenna" refers to an
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`"antenna used to gather RF energy." See Ex. 1004 at 5:64-6:1, 6:55-61 , 7:8-10;
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`Ex. 1001 ~66 . The '337 patent consistently describes the "booster antenna" as
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`gathering RF energy transmitted by a RFID reader and then transferring it to the
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`RF module, which includes an integrated circuit. Id. ; see also Ex. 1001 ~~67-70.
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`"conductive trace"
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`Under the broadest reasonable interpretation, "conductive trace" refers to
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`"electrically conductive material."
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`The
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`'337 patent does not illustrate a
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`4
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`Petition for Inter Partes Review of U.S. Patent No. 8,944,337
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`“conductive trace” or use any other words to describe it. Ex. 1004 at 6:62-63; see
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`also Fig. 1 (showing the “conductive trace” only as a block in a block diagram).
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`Nevertheless, the context of the “conductive trace” in the “RF module” confirms
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`that it is an electrically conductive material. For example, the ’337 patent
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`describes an “ohmic” connection between the “integrated circuit” and the
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`“conductive trace,” thus indicating that the “conductive trace” is an electrically
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`conductive material capable of a contact coupling. Ex. 1004 at Abstract, 1:54-58,
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`6:39-42; Ex. 1001 ¶¶71-73.
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`37 C.F.R. § 42.104(b)(4): How the Claim is Unpatentable
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`D.
`How Claims 1-9 are unpatentable, including the identification of evidence, is
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`provided in Sections V.A, V.C, V.D and V.F.
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`37 C.F.R. § 42.104(b)(5): Evidence Supporting Challenge
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`E.
`An Exhibit Appendix is attached. The relevance of the evidence, including
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`identifying specific portions of the evidence that support the challenge, may be
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`found in Sections V.A, V.C, V.D and V.F. Kapsch also submits a declaration of
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`Dr. Bruce Roesner in accordance with 37 C.F.R. § 1.68. Ex. 1001.
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`5
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`Petition for Inter Partes Review of U.S. Patent No. 8,944,337
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`V. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`OF THE CHALLENGED CLAIMS IS UNPATENTABLE
`A. Description of the Alleged Invention of the ’337 Patent and
`Background of the Technology
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`The ’337 patent is directed to a radio frequency identification (RFID) device
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`that can be switched between two different modes. Ex. 1001 ¶26. By way of
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`background, RFID devices are a ubiquitous technology: department stores attach
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`RFID devices to clothing to prevent theft; RFID tags are used for automatic tolling
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`on highways; and many facilities use RFID key-cards to control access (e.g. where
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`a user holds an ID card up to an RFID “reader”). Ex. 1001 ¶27. A basic RFID
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`system works by relying “on cooperation between an RFID reader [aka
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`“transponder” or “interrogator”] and an RFID tag.” Ex. 1004 at 4:35-36. See also
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`Ex. 1001 ¶28. “Most RFID tags contain at least two parts: One is an integrated
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`circuit for storing and processing information…” and the other is “an antenna for
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`receiving and transmitting the signal.” Ex. 1004 at 4:44-48; see also Ex. 1001 ¶28.
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`The “interrogator transmits a Radio Frequency (RF) carrier signal” which is
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`received by the antenna on the RFID tag (e.g. an office key-card) that is tuned to
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`receive that signal frequency and capture its energy. Ex. 1004 at 4:57-59. The
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`RFID tag’s integrated circuit may process the RF signal received, and then send
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`back “a pattern understood by the interrogator” (e.g. a key-card transmits an
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`employee’s identification number). Id. at 4:59-61; see also Ex. 1001 ¶28.
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`6
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`Petition for Inter Partes Review of U.S. Patent No. 8,944,337
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`The ’337 patent is directed to this basic type of RFID device, and these
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`fundamental building blocks of an RFID device were commonplace in the art at the
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`time of the alleged invention: an RFID module containing an integrated circuit and
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`an antenna. Ex. 1001 ¶29. In fact, many of the typical and well-known approaches
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`for mass-production of RFID devices manufactured these two components as
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`separate building blocks that would later be coupled together to form an RFID tag.
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`Id. Sections IV.A.2-4.
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`Thus, the crux of the purported invention boils down to the addition of an
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`on/off switch to “enable manual activation/deactivation of the RF module.” Ex.
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`1004 at 1:53-54; see also Ex. 1001 ¶29. The “slide-activated RFID tag” in Figure
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`10 below illustrates one way the ’337 patent contemplates performing this “manual
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`activation/deactivation.” Specifically, “the RFID tag may be activated or
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`deactivated by manually sliding a first substrate 1002 to or from casing 1004.” Ex.
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`1004 at 10:32-34; see also Ex. 1001 ¶29.
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`Figures 2A and 2B illustrate what happens within the “casing 1004” that
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`7
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`Petition for Inter Partes Review of U.S. Patent No. 8,944,337
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`causes the “activation/deactivation.” See Ex. 1001 ¶¶29-30. Inside the casing are
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`an “RF module” and a “booster antenna.” Figure 2A illustrates the active state, in
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`which the “RF module 220” is located over a “coupling region” at the center of
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`“booster antenna 210.” In that position, there is an electrical coupling between the
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`antenna and the RF module “such that RF energy gathered via the booster antenna
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`210 is transferred to the RF module 220.” Ex. 1004 at 6:59-61.
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`Activated State (’337 Figure 2A)
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`As shown in Figure 2B below, the tag can be switched off by sliding the RF
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`module to the left and away from the “coupling region” on the antenna. This
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`movement severs the electrical coupling between the RF module and the antenna.
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`8
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`Petition for Inter Partes Review of U.S. Patent No. 8,944,337
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`Deactivated State (Ex. 1004, Fig. 2B)
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`The Challenged Claims recite several other terms, phrases and limitations,
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`but none of them define supposedly inventive aspects of the ’337 patent. But, to
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`give proper technical background, some are addressed below.
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`“Booster” Antenna
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`On some occasions the ’337 patent specification refers to an “antenna”
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`without the antecedent word “booster.” On first glance, this may suggest that the
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`RFID device has another antenna in addition to the “booster” antenna. But, that is
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`not necessarily the case nor is it part of the alleged invention. Rather, the patent
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`uses the terms “antenna” and “booster antenna” interchangeably when it comes to
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`the claimed invention. Ex. 1001 ¶¶67-70. Thus, the ’337 patent does not use the
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`term “booster antenna” to suggest that the antenna is merely a “supplement” to a
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`9
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`Petition for Inter Partes Review of U.S. Patent No. 8,944,337
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`“primary” antenna. Id.2
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`“Conductive Traces” on a Substrate
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`Claim 2 of the ’337 patent recites that the “booster antenna comprises a
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`conductive trace pattern disposed upon a substrate.” As noted in the Claim
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`Construction Section IV.C, a “conductive trace” is simply an “electrically
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`conductive material.” The placement of electrically conductive material on a
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`substrate is as fundamental as it sounds, and does not inject any technical
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`complexity into the claims. See Ex. 1001 ¶37; see also id. ¶¶39, 42, 48-49, 55-56.
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`A substrate in this context is a non-conductive substance, typically a sheet or plate,
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`that provides support for other things placed on it, such as the “conductive trace”
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`and/or integrated circuit. Id. Thus, the placement of a “conductive trace” on a
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`substrate is simply how RFID tags and many other comparable circuit elements
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`were often manufactured. Id.
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`2
`Even without attaching what is typically regarded as an “antenna,” an RFID
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`reader may still be able to interrogate the RFID chip at very close range by virtue
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`of the circuitry surrounding the “integrated circuit” in an RFID device. Ex. 1004 at
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`6:42-45; Ex. 1001 ¶70. But, one of skill in the art would not understand this
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`capability of the incidental circuitry around the chip to capture a minimal amount
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`of the RF energy as being an “antenna.” Ex. 1001 ¶70.
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`10
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`Petition for Inter Partes Review of U.S. Patent No. 8,944,337
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`Coplanar
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`Claim 4 of the ’337 patent recites that “the integrated circuit is substantially
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`coplanar with said set of one or more conductive traces.” This “coplanar”
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`arrangement also does not inject any meaningful technical complexity into the
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`claims. Ex. 1001 ¶44; see also id. ¶¶50-51, 54. As noted above, it was standard
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`practice to mount an integrated circuit and its connected circuitry (i.e. “conductive
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`trace”) to a substrate, just to hold everything together. Since, in many typical
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`manufacturing processes those components were mounted to the same substrate
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`(typically a flat plate), then they were typically coplanar. Id. Thus, the recitation
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`of a “coplanar” arrangement in Claim 4 does not define a noteworthy aspect of the
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`alleged invention. Id.
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`Electrical Coupling
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`The patent contemplates that the electrical coupling between the “RF
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`module” and “booster antenna” may be either a capacitive coupling or inductive
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`coupling. See Ex. 1004 at claims 5 and 6. The ’337 patent does not explain the
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`types of electrical couplings, the difference between couplings, or provide any
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`guidance regarding when one should be implemented instead of the others. Ex.
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`1001 ¶32. Setting aside the ’337 patent’s failure to define what it means with
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`respect to those limitations, one of skill in the art would have been familiar with
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`the general concepts of “inductive coupling” and “capacitive coupling,” and their
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`11
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`Petition for Inter Partes Review of U.S. Patent No. 8,944,337
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`application to electrically couple an RF module to an antenna is non-inventive. Ex.
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`1001 ¶33.
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`At a basic level, there are several varieties of an “electrical coupling” in
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`which at least two things are arranged and capable of transferring electrical energy
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`to and from each other. Id. Perhaps the most straight-forward “electrical
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`coupling” is an “ohmic connection,” where two conductors are in direct contact
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`with each other, like when two wires are twisted together. Id. ¶34. This is the type
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`of connection in Claim 3 that links the “integrated circuit” and “conductive trace.”
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`Another type of electrical coupling is a “capacitive” coupling, in which the
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`transfer of energy occurs by means of an electrical field. Id. ¶35. A textbook
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`example of a capacitor involves two conductive plates that are spaced apart by a
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`thin insulating material. Id. Claim 5 of the ’337 patent recites that a capacitive
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`coupling can link the “booster antenna” to the “RF module.” Alternatively, Claim
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`6 of the ’337 patent recites that an inductive coupling can link the “booster
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`antenna” to the “RF module.” An inductive coupling uses a magnetic field to
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`transfer energy, and therefore the terms “inductive coupling” and “magnetic
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`coupling” are often used interchangeably. Id. ¶36. An inductive coupling is
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`classically exemplified as two wire loops placed side-by-side; where a current
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`running through one loop creates a magnetic field, and that magnetic field induces
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`a current in the second loop. Id.
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`12
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`Petition for Inter Partes Review of U.S. Patent No. 8,944,337
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`It was commonplace to employ these types of electrical couplings to join
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`components of an RFID tag, such as RF modules that were manufactured
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`separately from the antennas. Id. ¶37. Thus, these electrical couplings are simply
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`how RFID tags were often manufactured. Id.
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`Visible Status Indicators
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`Claims 8 and 9 additionally recite that the “status of the RFID device” is
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`visually shown by an “indicator.” Claim 9 specifies that the “indicator” displays
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`one color when the RFID device is active and another color if it is inactive. Figure
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`2C below illustrates how the one paragraph of the ’337 patent describes this
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`arrangement. Ex. 1004 at 7:44-50.
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`
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`Summary of the Prosecution History of the ’337 Patent
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`B.
`The ’337 patent resulted from a chain of applications starting with U.S.
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`Provisional App. No. 61/487,372, filed on May 18, 2011 and U.S. Provisional
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`App. No. 61/483,586, filed on May 6, 2011. The ’337 patent issued from U.S. Pat.
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`13
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`Petition for Inter Partes Review of U.S. Patent No. 8,944,337
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`App. No. 14/060,407, filed on October 22, 2013, which is a continuation of U.S.
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`Pat. App. No. 13/465,834 (now U.S. Patent No. 8,561,911).
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`The same Examiner reviewed both the ’337 patent and its parent, the ’911
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`patent, and did not make any prior art rejections in either prosecution. The only
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`rejection applied to the ’337 patent was for obviousness type double-patenting in
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`view of the ’911 patent, which the Applicant overcame via a terminal disclaimer.
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`See Exs. 1010, 1011 and 1019.
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`Summary of Unpatentability Arguments
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`C.
`The problem purportedly solved by the ’337 patent was actually solved years
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`earlier, and even in the exact same fashion as the claimed invention. The ’337
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`patent alleges that, at the time of the invention, “[c]onventional RFID tags lack the
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`ability to be deactivated.” Ex. 1004 at 1:10. The Applicant, Neology, described
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`this as a problem because “there are certain situations where it is actually desirable
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`to have an RFID tag deactivated.” Ex. 1004 at 1:11-12. The ’337 patent
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`specification includes two example scenarios. First, a passport may have an RFID
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`device containing sensitive information that the traveler would like to keep private.
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`But, if the device is constantly activated, then a stranger could potentially steal that
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`information by using an RFID reader as the traveler walks by. See Ex. 1004 at
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`1:12-26.
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`As a second example, the ’337 patent references the use of RFID tags for
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`14
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`Petition for Inter Partes Review of U.S. Patent No. 8,944,337
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`automatic billing on toll-roads. Ex. 1004 at 1:31-43. Since a car may be exempt
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`from a highway toll under certain circumstances, such as a carpool full of
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`passengers, it would be desirable to simply turn off the RFID tag mounted on the
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`windshield so that the RFID reader in the toll-gate does not automatically bill the
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`driver. The ’337 patent alleges, however, that “[s]ince a driver’s RFID tag may not
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`be deactivated, [] the RFID tag may respond to an interrogation signal issued from
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`the toll-gate even when the driver has validly used the carpool lane,” and the driver
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`may be billed anyway. Ex. 1004. at 1:37-40. The ’337 patent therefore proclaims
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`that “[w]hat is needed is a system for an RFID tag that may be easily activated or
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`deactivated.” Ex. 1004 at 1:44-45.
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`But, well before the time of the alleged invention, others had identified the
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`need to maintain the privacy of the information on an RFID device, and already
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`designed ways to switchably deactivate RFID devices.
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`Ground 1: Atherton discloses every element, when properly construed, of
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`the ’337 patent claims 1-6 and 8, arranged as claimed. Like the ’337 patent,
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`Atherton is directed to mechanical and electrical features for preserving the privacy
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`of information on an RFID tag, and is in fact titled “A radio frequency
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`identification tag with privacy and security features.” Atherton warns of potential
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`privacy intrusions, much like the passport example in the ’337 patent: “it may be
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`possible for an RFID tag on a tagged item to be read… without the consumer being
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`aware that reading of the tag has occurred,” which “may violate the privacy rights”
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`of the targeted individual. Ex. 1006 at 1:21-24. Atherton’s solution is the same as
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`that claimed in the ’337 patent—a mechanism by which a user can selectively
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`activate/deactivate the RFID tag. See e.g. Ex. 1006 at 2:17-20, 5:12-18, 11:5-11,
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`Figs. 1-5. Also like the ’337 patent, Atherton discloses that this selective
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`activation is accomplished by severing the coupling between a booster antenna and
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`RF module. (Id.) Atherton discloses a mechanism for severing the coupling by
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`unfolding the RFID device so that Region 1 (containing the “RF module”) is
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`distanced from Region 2 (containing the “booster antenna”).
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`Ground 2: Kubo discloses every element, when properly construed, of the
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`’337 patent claims 1-4 and 6-8, arranged as claimed. Kubo is also directed to a
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`mechanism for facilitating “authorized access to the RFID tag” but “preventing an
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`illegal leak of the tag information.” Ex. 1007 at 3:9-12. Kubo discloses a system
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`where an RFID tag is surrounded by a shield that protects it from access by an
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`RFID reader. To access the information on the RFID tag, a user can selectively
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`Petition for Inter Partes Review of U.S. Patent No. 8,944,337
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`couple another antenna (considered the “booster antenna”) with the RFID tag, so
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`that the “booster antenna” partly extends outside of the shield so that an RFID
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`reader can communicate with the RFID tag. See, e.g., Ex. 1007 at Figs. 1, 3, 4 and
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`6, 2:48-51, 2:62-65, 6:46-50, 7:6-11, 7:15-20, 10:49-55, 10:66-11:23. Thus, like
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`the ’337 patent, Kubo discloses that the RFID tag is selectively activated by
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`coupling a booster antenna to an RF module. Id. Kubo discloses several variants
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`of this “booster antenna,” and each of them anticipates claims 1-4 and 6-8 of the
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`’337 patent. One of the variants, with a detachable “booster antenna,” is shown
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`below in Figure 3.
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`
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`Ground 3: Janke discloses every element, when properly construed, of the
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`’337 patent claims 1-4, 7 and 8, arranged as claimed. Like the ’337 patent, Janke
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`is directed to preserving the privacy of information on an RFID tag. Indeed, Janke
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`even contemplates the same passport example as in the ’337 patent: “Nowadays,
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`Petition for Inter Partes Review of U.S. Patent No. 8,944,337
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`there is the problem that… passports or other confidential personal documents can
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`be easily read [by an RFID reader] without the owner’s knowledge.” Ex. 1008 ¶7.
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`Janke’s solution, like the ’337 patent, is for a user to activate/deactivate the RFID
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`tag by selectively coupling the antenna to the RF module. Ex. 1008 ¶13. Janke
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`further discloses that the switching may be done via a slide mechanism, like claim
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`7 of the ’337 patent. Ex. 1008 ¶14.
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`D. Claim-by-Claim Explanation of Grounds for Unpatentability
`Ground 1:
` Atherton Anticipates Claims 1-6, and 8
`(1) Claim 1
`
`a.
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`Preamble: An RFID device comprising:
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`Although under the broadest reasonable interpretation the preamble is not
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`limiting, Atherton discloses an RFID device. Ex. 1001 ¶77. Atherton regularly
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`refers to the apparatus as an “RFID tag” throughout the disclosure. Even the title
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`of Atherton states that it is an RFID device: “A radio frequency identification
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`[RFID] tag with privacy and security capabilities.”
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`b.
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`Element [a]: a booster antenna adapted to extend the
`operational range of the RFID device;
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`Atherton discloses the booster antenna. Ex. 1001 ¶78. Specifically,
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`Atherton regularly refers to “conducting areas 107” as “provid[ing] an efficient
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`RFID antenna for the RFID integrated circuit 104.” Ex. 1006 at 5:5-7; see also
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`Abstract, 5:15-18, 6:5-8, 6:36-7:18, 8:8-14, 9:17-23, Figs. 1-5.
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`Petition for Inter Partes Review of U.S. Patent No. 8,944,337
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`Atherton also discloses that the booster antenna is “adapted to extend the
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`operational range of the RFID device.” Ex. 1001 ¶79. For example, Atherton
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`discloses that the RFID device has only a “poor antenna” when “unfolded” and not
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`coupled to the “conducting areas 107.” Ex. 1006 at 4:17-25. Atherton describes
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`how the performance of the RFID device is “degraded or disabled” when the RFID
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`circuitry is not coupled with the “conducting areas 107.” Ex. 1006 at 2:24-25; see
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`also 5:5-8, 11:12-14.
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`c.
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`Element [b]: an RF module comprising an integrated circuit
`and a set of one or more conductive traces,
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`Atherton discloses the RF module comprising an integrated circuit. Ex.
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`1001 ¶80. Atherton describes an “integrated circuit” throughout the disclosure,
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`and references it in the Figures as number “104.” See e.g., Ex. 1006 at Figs. 1-5,
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`Abstract (“The region 1 has an RFID integrated circuit (104) and areas (105) of
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`Petition for Inter Partes Review of U.S. Patent No. 8,944,337
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`electrically conductive material.”), 4:17-19, 5:7, 5:18, 5:26, 6:4, 6:36, 7:3, 7:13-14,
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`8:3, 8:10-12, 9:13-18, 9:30-34, 11:4-6, 11:16.
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`Atherton also discloses that the RF module comprises a “set of one or more
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`conductive traces,” as recited in claim 1. Ex. 1001 ¶81. For example, Atherton
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`discloses “conductive material” emanating from the “integrated circuit” and
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`occupying an “area (105).” Ex. 1006 at Abstract; see also id. at 4:19-23, passim.
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`
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`d.
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`Element [c]: wherein at least one conductive trace of said set of
`one or more conductive traces is adapted to electrically couple
`to a coupling region of the booster antenna when the coupling
`region of the booster antenna is located in a first position
`relative to said set of one or more conductive traces; and
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`Atherton discloses the coupling region of the booster antenna by virtue of
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`the “a portion of each of the conducting areas 107.” Ex. 1006 at 5:12-18; see also
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`id. at 11:5-11, Figs. 1-5; Ex. 1001 ¶82.
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`Atherton further discloses the entire arrangement of Element [c]. See e.g.,
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`Ex. 1001 ¶¶83-84. Specifically, Atherton discloses the “coupling region of the
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`booster antenna” as electrically coupling to the recited “at least one conductive
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`trace” (see Atherton’s “conductive areas 105”). As illustrated below in Figure 1B,
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`Atherton describes that “[a]fter the tag 100 is folded into the configuration
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`illustrated in figure 1B at least a portion of the conducting areas 107 is brought into
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`close proximity with at least a portion of the electrically conducting areas 105,
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`resulting in the conducting areas 105 and 107 being electrically coupled to each
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`other by means of a non-contact coupling method such as capacitive coupling or
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`inductive coupling.” Ex. 1006 at 5:1-53. As discussed in the background section
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`regarding “Electrical Coupling,” capacitive coupling and inductive coupling are
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`two types of electrical couplings. Supra § V.A. Indeed, dependent Claims 5 and 6
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`3
`All emphasis added unless otherwise indicated.
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`Petition for Inter Partes Review of U.S. Patent No. 8,944,337
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`of the ’337 patent respectively specify that the electrical coupling is either
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`capacitive or inductive.
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`Atherton further describes this arrangement as a “first configuration in which said
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`integrated circuit and said antenna are operatively electrically coupled to provide
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`an RFID function.” Ex. 1006 at 2:17-20; see also id. at 5:12-18, 11:5-11, Figs. 1-
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`
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`5.
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`e.
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`Element [d]: a switching mechanism adapted to change the
`position of the coupling region of the booster antenna relative
`to the position of said at least one conductive trace.
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`Atherton discloses a “switching mechanism,” as recited in Claim 1, by virtue
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`of folding the RFID tag along the “fold line 101.” Ex. 1006 at 4:3; see also e.g. id.
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`at Abstract, 3:1-3 (“said substrate is folded back upon itself when said tag is
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`rearranged from said second configuration to said first configuration”), 3:12-13,
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`4:33-35, 11:24-27; 12:7-9; Ex. 1001 ¶85.
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`Atherton further discloses that the “switching mechanism” (folding) changes
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`the relative position of the “conductive trace,” as recited in Claim 1. For example,
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`Petition for Inter Partes Review of U.S. Patent No. 8,944,337
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`as illustrated below in Figure 2, Atherton describes how the “antenna is located
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`adjacent to said integrated circuit in said first configuration, and [upon unfolding,]
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`displaced from said integrated circuit in said second configuration.” Ex. 1006 at
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`3:4-5; see also id. at 5:1-5, 5:21-28, 11:5-11, 11:28-30, Figs. 1-5; Ex. 1001 ¶86.
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`
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`(2) Claim 2
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`Atherton teaches every element of Claim 2, including the limitations of
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`Claim 1, from which Claim 2 depends. Hence, Atherton also anticipates Claim 2.
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`See Ex. 1001 § VII.C.
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`a.
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`The RFID device of claim 1, wherein the booster antenna
`comprises a conductive
`trace pattern disposed upon a
`substrate.
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`As illustrated below in Figures 1B, 3A and 3B, Atherton discloses that “the
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`RFID antenna [is] also secured to said substrate.” Ex. 1006 at 2:17; see also id. at
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`Petition for Inter Partes Review of U.S. Patent No. 8,944,337
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`4:29-30 (“At least one area 107 of electrically conducting material i
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