`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`KAPSCH TRAFFICCOM IVHS INC.,
`
`Petitioner,
`v.
`NEOLOGY, INC.
`Patent Owner.
`____________________
`U.S. Patent No. 8,944,337
`IPR Case No.: IPR2016-01763
`_____________________
`
`PATENT OWNER NEOLOGY INC.’S, PRELIMINARY RESPONSE
`UNDER 35 U.S.C. § 313 AND 37 C.F.R. § 42.107
`
`
`
`
`TABLE OF AUTHORITIES .................................................................................... ii
`I.
`INTRODUCTION AND SUMMARY OF ARGUMENT ................................ 1
`II.
`OVERVIEW OF THE ‘337 PATENT .............................................................. 3
`III. CLAIM CONSTRUCTION ............................................................................. 5
`IV. TRIAL SHOULD NOT BE INSTITUTED BECAUSE PETITIONERS HAVE
`NOT ESTABLISHED THAT THEY ARE ENTITLED TO RELIEF ............ 13
`A.
`Legal Standard ..................................................................................... 13
`B.
`Atherton Does Not Anticipate Any of Claims 1-6 and 8 of the
`‘337 Patent. .......................................................................................... 16
`Kubo Does Not Anticipate Any of Claims 1-4 and 6-8 of the
`‘337 Patent. .......................................................................................... 20
`Janke Does Not Anticipate Any of Claims 1-4, 7, and 8 of the
`‘337 Patent. .......................................................................................... 28
`The Proposed Combination of Atherton and Kubo and Roesner
`Does Not Render Any of Claims 1-9 of the ‘337 Patent
`Obvious. .............................................................................................. 33
`1.
`The Proposed Combination Does Not Disclose A
`Switching Mechanism That changes the Position of a
`Booster Antenna. ....................................................................... 33
`No Motivation to Combine References or Predictable
`Results Stemming From The Combination Have been
`Shown. ....................................................................................... 36
`The Proposed Combination of Kubo and Roesner Does Not
`Render Any of Claims 8 and 9 of the ‘337 Patent Obvious. ............... 55
`CONCLUSION .............................................................................................. 57
`
`
`C.
`
`D.
`
`E.
`
`F.
`
`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
`
`2.
`
`V.
`
`
`
`i
`
`
`
`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Federal Cases
`ActiveVideo Networks v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .......................................................................... 15
`
`In re Am. Acad. of Sci. Tech. Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) ............................................................................ 6
`
`Karsten Mfg. Corp. v. Cleveland Golf Co.,
`242 F.3d 1376 (Fed. Cir. 2001) .......................................................................... 13
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 14, 15
`
`Net MoneyIN v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) .......................................................................... 13
`
`PPC Broadband, Inc. v. Corning Optical Comm’ns,
`Appeal No. 2015-1364, Slip Op. at 6 (Fed. Cir. Feb. 22, 2016) .......................... 6
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ...................................................................... 6, 10
`
`Plas-Pak Indus., Inc. v. Sulzer Mixpac AG,
`Appeal No. 2014-1447, Slip Op. at 7 (Fed. Cir. Jan. 27, 2015) ..................passim
`
`PTAB Decisions
`Dominion Dealer Solutions, LLC v. AutoAlert, Inc., Case IPR2013-
`00220, Paper 8 (P.T.A.B. Aug. 15, 2013) .................................................... 13, 14
`
`Dominion Dealer Solutions, LLC v. AutoAlert, Inc., Case IPR2013-
`00223 (JL), Paper 9 (P.T.A.B. Aug. 15, 2013) ............................................passim
`
`Kinetic Techs., Inc. v. Skyworks Solutions, Inc., Case IPR2014-00529,
`Paper 8, at 15 (P.T.A.B. Sept. 29, 2014) .....................................................passim
`
`
`
`ii
`
`
`
`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
`
`
`TRW Automotive US LLC v. Magna Elecs. Inc., Case IPR2014-00259,
`Paper 19 (P.T.A.B. June 26, 2014) ......................................................... 14, 15, 43
`
`Federal Statutes
`
`35 U.S.C.
`§ 103(a) ............................................................................................................... 14
`§ 312(a)(3) .............................................................................................. 41, 55, 56
`§ 313 ...................................................................................................................... 1
`
`Patent Rules
`
`37 C.F.R.
`§ 42.22(b) .............................................................................................................. 2
`§ 42.107 ................................................................................................................. 1
`
`
`
`
`
`iii
`
`
`
`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
`
`
`
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107, Patent Owner Neology
`
`Inc. (“Neology”) provides the following Preliminary Response to the Petition for Inter
`
`Partes Review of U.S. Patent No. 8,944,337 (“the ‘337 Patent”) (Ex. 1004) filed by
`
`Petitioners Kapsch TrafficCom IVHS Inc., Kapsch TrafficCom IVHS Holding Corp.,
`
`Kapsch TrafficCom IVHS Technologies Holding Corp., Kapsch TrafficCom U.S.
`
`Corp., and Kapsch TrafficCom Holding Corp. (collectively, “Petitioners”).
`
`For at least the reasons discussed below, Patent Owner respectfully requests
`
`that the Board decline to institute Inter Partes Review of the ‘337 Patent.
`
`I.
`
`INTRODUCTION AND SUMMARY OF ARGUMENT
`
` Petitioners assert five grounds for its request that the Board cancel claims 1-
`
`9 of the ‘337 Patent:
`
`Ground 1, PCT International Publication No. WO 2008/074050 A1 to
`
`Atherton et al. (Ex. 1006) (“Atherton”) anticipates claims 1-6, and 8 under section
`
`102;
`
`Ground 2, U.S. Patent No. 7,460,018 to Kubo (Ex. 1007) (“Kubo”)
`
`anticipates claims 1-4, and 6-8 under section 102;
`
`Ground 3, U.S. Published Application No. 2007/0290858 to Janke, et al.
`
`(Ex. 1008) (“Janke”) anticipates claims 1-4, 7, and 8 under section 102;
`
`Ground 4, Atherton in view of Kubo and in further view of U.S. Published
`
`
`
`1
`
`
`
`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
`
`
`Application No. 2010/0302012 to Roesner (Ex. 1009) (“Roesner”) renders claims
`
`1-9 obvious under section 103; and
`
`Ground 5, Kubo in view of Roesner renders claims 1-9 obvious under
`
`section 103.
`
`For at least the reasons explained below, Patent Owner submits that each of
`
`the Grounds asserted by the Petitioners individually fail to demonstrate a
`
`reasonable likelihood of success on the merits. As to each ground, instead of
`
`providing a “detailed explanation of the significance of the evidence,” 37 C.F.R.
`
`42.22(b), Petitioners merely provide bare-bones characterizations of the cited art
`
`without offering any explanation as to why those characterizations allegedly
`
`demonstrate that the cited art anticipates the challenged claims or renders the
`
`challenged claims obvious. Petitioners simply fail to explain how the excerpted
`
`sections of the prior art references teach several claim elements and/or failed to
`
`articulate reasons underpinned by a rational basis that support their assertion of
`
`obviousness. With respect to the broadest reasonable interpretation (“BRI”) of the
`
`claim features, Patent Owner respectfully submits that the Petitioners have failed to
`
`provide a sufficient explanation of the claim features for Patent Owner to
`
`understand and respond to the Grounds.
`
`Additionally, as can best be understood by the Patent Owner, it is submitted
`
`
`
`2
`
`
`
`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
`
`
`that the Petitioners’ proposed grounds of challenge do not establish a prima facie
`
`case of anticipation and/or obviousness because each and every feature of the
`
`challenged claims is not disclosed, taught, or suggested in the Petitioner’s proposed
`
`combinations of references. Moreover, Patent Owner submits that the proposed
`
`combinations of references cannot be properly combined, and thus, any prima facie
`
`case of obviousness is rebutted. Accordingly, the Board should decline to institute
`
`a trial regarding this Petition.
`
`II. OVERVIEW OF THE ‘337 PATENT
`
`The ‘337 Patent issued on February 3, 2015, based on U.S. Patent
`
`Application No. 14/060,407, filed on October 22, 2013.
`
`The inventions claimed in the ‘337 Patent generally relate to radio frequency
`
`identification (RFID) switch tags that enable manual activation/deactivation of the
`
`RF module. The ‘337 Patent describes a switchable RFID tag having an RF
`
`module (220) including an RFID chip and conductive traces that provide antenna
`
`action, and a booster antenna (210) that selectively extends the range of the
`
`antenna formed by the conductive traces based on the position of a switching
`
`mechanism. See e.g., Ex. 1004, Abstract, 1:51-58, 6:37-67. FIGS. 2A and 2B of
`
`the ‘337 Patent illustrate the RF module (220) and booster antenna (210) in the
`
`coupled (FIG. 2A) and uncoupled (FIG. 2B) positions.
`
`
`
`3
`
`
`
`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
`
`
`
`
`
`
`
`The ‘337 Patent explains that the RF module 220 comprises “an RFID
`
`integrated circuit in an ohmic connection to an impedance matched conductive
`
`trace pattern in the same plane as the integrated circuit.” Ex. 1004, 6:39-42.
`
`“Even though the RF module 220 is fully functional and testable, it may have a
`
`limited range of operation due to the small surface area of the conductive trace
`
`pattern.” Ex. 1004, 6:39-45. “The trace patterns can be either inductively or
`
`capacitively coupled with a booster antenna 210.” Ex. 1004, 6:63-65.
`
`“The placement of the RF module 220 with respect to the booster antenna
`
`210 may alter the operational range and performance of the RFID tag 110.” Ex.
`
`
`
`4
`
`
`
`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
`
`
`1004, 7:3-5. A mechanism is provided for “selectively altering the relative
`
`position of RF module 220 and the booster antenna 210.” Ex. 1004, 7:24-26. This
`
`allows a user “to selectively displace the RF module 220 from an optimized
`
`position over the booster antenna 210 rendering it unresponsive or detuned such
`
`that it will not respond at a sufficient measurement or perform adequately.” Ex.
`
`1004, 7:26-30.
`
`Claim 1, which is the only independent claim of the ‘337 Patent, recites:
`
`1. An RFID device comprising:
`
`a booster antenna adapted to extend the operational range of the RFID
`device;
`
`an RF module comprising an integrated circuit and a set of one or more
`conductive traces,
`
`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
`
`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.
`III. CLAIM CONSTRUCTION
`
`During inter partes review claims must be given their broadest reasonable
`
`interpretation (“BRI”) consistent with the specification as it would be interpreted
`
`
`
`5
`
`
`
`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
`
`
`by one of ordinary skill in the art. MPEP § 2111; In re Am. Acad. of Sci. Tech.
`
`Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Dictionaries and treatises can be
`
`useful as extrinsic evidence in claim construction, but conclusory, unsupported
`
`assertions by experts are not useful. Phillips v. AWH Corp., 415 F.3d 1303, 1318
`
`(Fed. Cir. 2005). For inter partes review it is important to distinguish between
`
`applying the broadest possible interpretation, which may be overly broad, and the
`
`broadest reasonable interpretation in light of the claims and specification. The
`
`PTAB cannot simply rely on dictionary definitions to reach a construction without
`
`explaining what is taught in the claims and the specification. PPC Broadband, Inc.
`
`v. Corning Optical Comm’ns, Appeal No. 2015-1364, Slip Op. at 6 (Fed. Cir. Feb.
`
`22, 2016). “The fact that [the term] has multiple dictionary meanings does not
`
`mean that all of these meanings are reasonable interpretations in light of the
`
`specification.” Id., at 7. Thus, the broadest reasonable interpretation of a term
`
`must not be divorced from the meaning imparted by the claims and specification of
`
`the patent.
`
`Petitioners have proposed the following constructions of claim terms.
`
`1.
`
`Booster Antenna
`
`“Booster antenna” – an “antenna used to gather RF energy.” Pet., 4:13-15.
`
`Neology disputes Petitioners’ proposed construction of “booster antenna” for the
`
`
`
`6
`
`
`
`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
`
`
`reasons set forth below. Petitioners improperly conflate the term “booster antenna”
`
`with the word “antenna.” Ex. 2002, ¶¶ 41, 69. A “booster antenna” is not the
`
`same as an “antenna.” Id. Based on certain passages in the ‘337 Patent that
`
`describe an unclaimed embodiment and that Petitioners misconstrue, Petitioners
`
`point to the antenna 126 depicted in Figure 1 of the ‘337 Patent and incorrectly
`
`equate the claimed “booster antenna” with an “antenna.” Pet., 4:13-18, 9:5-10:1;
`
`Ex. 1001, ¶ 68. However, Figure 1 of the ‘337 Patent illustrates a typical
`
`arrangement of a reader 102 in communication with a tag 110, where the tag 110
`
`comprises an antenna 126 and an integrated circuit 122, and the antenna 126 can be
`
`interfaced with the integrated circuit 122 via conductive traces 124. Ex. 2002, ¶¶
`
`36-39. The conductive traces 124 and integrated circuit 122 comprise an RF
`
`module. Id. 37.
`
`The embodiments the follow Figure 1 (starting with Figure 2) describe the
`
`improvements to the basic tag 110 shown in Figure 1. These improvements are
`
`shown starting in Figure 2 of the ‘337 Patent. One improvement is that the RF
`
`module in Figure 2 can actually have antenna action, although possibly over a
`
`limited range. Ex. 1004, 6:39-45; Ex. 2002, ¶ 37. The embodiment of Figure 2
`
`comprises an operational RF module (220) interfaced with a booster antenna (210).
`
`Ex. 2002, ¶ 37. The module (220) and booster antenna (210) can then be coupled
`
`
`
`7
`
`
`
`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
`
`
`together via capacitive or inductive coupling. Id. The booster antenna (210) thus
`
`acts to boosts the range of the RF module so that it can function in a given
`
`application. Id.
`
`The ‘337 Patent thus clearly distinguishes between the “booster antenna”
`
`and the “antenna.” Ex. 2002, ¶ 69. The RFID switch device of the ‘337 Patent
`
`includes an RF module with an integrated circuit ohmically connected to a
`
`conductive trace pattern and “a booster antenna [that] overlaps a region of the
`
`conductive trace pattern.” Ex. 1004, 1:59-61. In addition to describing a “booster
`
`antenna” that overlaps the conductive trace pattern, the ‘337 Patent also describes
`
`the booster antenna’s function:
`
`The RF module 220 may comprise an RFID integrated circuit
`in an ohmic connection to impedance matched conductive trace
`pattern in the same plane as the integrated circuit. Even though
`the RF module 220 is fully functional and testable, it may have
`a limited range of operation due to the small surface area of the
`conductive trace pattern.
`
`Ex. 1004, 6:39-45 [emphasis added]. This distinction is important because a
`
`significant and innovative aspect of the ‘337 Patent is a novel way of switching a
`
`booster antenna couple it to the main antenna of the chip in a repeatable way – an
`
`aspect that the prior art references do not disclose. Ex. 2002, ¶ 76. This novel
`
`coupling enables use of a switching mechanism in a repeatable fashion to cause the
`
`
`
`8
`
`
`
`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
`
`
`booster antenna to couple (or not couple) with the main antenna thereby extending
`
`(or not extending) the range of the main antenna of the chip. Id.
`
`As explained in the specification, the “conductive traces” recited in the
`
`claims provide antenna action. Ex. 1004, 6:39-45, Ex. 2002, ¶ 76. The RF module
`
`is ohmically connected to the conductive trace pattern to such that “the RF module
`
`220 is fully functional and testable” although it may have “a limited range of
`
`operation due to the small surface area of the conductive pattern. Ex. 1004, 6:39-
`
`45. Thus, the booster antenna couples to the conductive trace pattern that acts as
`
`the main antenna. As a result, in order to completely reduce the range of the main
`
`antenna (i.e., the conductive traces) when the booster antenna is not engaged
`
`shielding of the conductive traces by the booster antenna is effected:
`
`In the arrangement of FIG. 2B, a smaller portion, or none, of
`the RF energy collected by the booster antenna 210 is
`transferred to the RF module 220. In this manner, the effective
`operational range of the RFID tag 110 may be reduced as
`compared to the arrangement of FIG. 2A. In fact, because RF
`module 220 is completely or at least partially shielded by a
`portion of antenna 210, RFID communications between the
`RFID tag 110 and the RFID reader interrogator 102 may be
`completely halted. This non-operational state may be useful,
`for instance, in situations where it is desirable to render the
`RFID tag 110 unresponsive to an RFID interrogation signal.
`
`Ex. 1004, 7:8-19.
`
`While Petitioners rely on an unclaimed embodiment to allege that there is no
`
`
`
`9
`
`
`
`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
`
`
`difference between an antenna and a booster antenna, the intrinsic record makes
`
`sufficiently clear to a POSITA the difference between an antenna and a booster
`
`antenna after considering the limitation “not only in the context of the particular
`
`claim in which the disputed term appears, but in the context of the entire patent,
`
`including the specification.” Phillips, 415 F.3d at 1313.
`
`Petitioners conflate the role of a “booster antenna” with that of a primary
`
`antenna. Ex. 2002, ¶ 69. The “booster antenna adapted to extend the operational
`
`range” is clearly the highly efficient radiating element 210 in FIGS. 2A and 2B of
`
`the ‘337 Patent, which also appears Figures 3, 4, and 5 in various forms. Id. In
`
`describing Figure 1, the ‘337 Patent refers to the tag as having “its own antenna
`
`126” which is attached to the “conductive trace pattern.” Ex. 1004, 5:61-64.
`
`Antenna 126 illustrated in Figure 1 of the ‘337 Patent is not a booster antenna.
`
`Contrary to Petitioner’s assertion (Ex. 1001, ¶ 69), the description of Figure 1 does
`
`not indicate one way or the other that antenna 126 is a booster antenna. Ex. 2002,
`
`¶ 74. Furthermore, the description of Figure 1 does not indicate whether RF
`
`module 120 has, or does not have, a limited range of operation. Id. Therefore, to
`
`the extent Figure 1 of the ‘337 Patent depicts an embodiment that does not disclose
`
`a booster antenna that can be coupled to an RF module having a limited
`
`operational range this embodiment is not claimed and is therefore irrelevant for
`
`
`
`10
`
`
`
`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
`
`
`purposes of the petition. Id.
`
`Thus, Patent Owner proposes that the term “booster antenna” be construed
`
`as “an antenna that couples with a primary antenna to boost the signal for the
`
`primary antenna” in accordance with the BRI of the term. This interpretation is
`
`consistent with the intrinsic evidence of the ‘337 Patent as explained above.
`
`2.
`
`Conductive Trace
`
`“Conductive trace” – refers to “electrically conductive material.” Pet., 4:19-
`
`21. Patent Owner does not dispute Petitioner’s proposed construction of the term
`
`“conductive trace” at this time. However, Patent Owner reserves the right to object
`
`to Petitioners’ construction or propose alternative construction in the future.
`
`3.
`
`Switching Mechanism
`
`The Board is respectfully requested to construe an additional term not
`
`identified by Petitioners: switching mechanism. Patent Owner’s proposed BRI for
`
`this
`
`term
`
`is “a mechanism comprising a
`
`lever, switch, knob, slider,
`
`rotatable member, or similar mechanical structure with discrete positions.” This
`
`interpretation is consistent with the intrinsic evidence of the ‘337 Patent.
`
`In the context of the ‘337 Patent, the claim feature “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” is directed to a
`
`
`
`11
`
`
`
`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
`
`
`mechanism having a structure similar to a lever, switch, knob, slider, rotating
`
`member as shown, for example, by reference numeral 240 of the drawings of the
`
`‘337 Patent.
`
`In the specification and drawings of the ‘337 Patent, the “switching
`
`mechanism” as claimed refers to structural element 240 of FIG. 2C. More
`
`specifically, the switching mechanism allows a user to “manually change the
`
`operational state of the RFID device by activation of a lever, switch, knob, slider,
`
`rotating member, or other similar structure.” Ex. 1004, 6:33-36. By manipulating
`
`the slider, a user modifies the relative positions of the RF module 220 and the
`
`booster antenna 210.” Ex. 1004, 7:40-42.
`
`Further, the ‘337 patent describes “a switching mechanism adapted to switch
`
`the position of the first substrate between a first position and at least a second
`
`position.” Ex. 1004, 2:25-27 (emphasis added); Ex. 2002 ¶ 80. Figure 8A of the
`
`‘337 Patent, for example, shows “a perspective view of the back side of a
`
`triangular-shaped and rotatable RFID switch” depicting three discreet positions.
`
`Ex. 1004, 10:7; Ex. 2002, ¶¶ 80-82.
`
`A person of ordinary skill in the art (POSITA) would have understood that a
`
`“switching mechanism” in this context is a mechanism comprising a lever, switch,
`
`knob, slider, rotatable member, or similar mechanical structure with discrete
`
`
`
`12
`
`
`
`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
`
`
`positions. Ex. 2002, ¶¶ 77, 80-82.
`
`IV. TRIAL SHOULD NOT BE INSTITUTED BECAUSE PETITIONERS
`HAVE NOT ESTABLISHED THAT THEY ARE ENTITLED TO
`RELIEF
`A. Legal Standard
`
`1.
`
`Anticipation
`
`“A claim is anticipated only if each and every element as set forth in the
`
`claim is found, either expressly or inherently described, in a single prior art
`
`reference.” M.P.E.P. § 2131 (quoting Verdegaal Bros. v. Union Oil Co. of Cal.,
`
`814 F.2d 628, 631 (Fed. Cir. 1987)). “Anticipation requires that a reference
`
`disclose ‘not only all of the limitations claimed but also all of the limitations
`
`arranged or combined in the same way as recited in the claim.’” Dominion Dealer
`
`Solutions, LLC v. AutoAlert, Inc., Case IPR2013-00220, Paper 8, at 13 (P.T.A.B.
`
`Aug. 15, 2013); Net MoneyIN v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir.
`
`2008) (“[I]t was error for the district court to find anticipation by combining
`
`different parts of the … reference simply because they were found within the four
`
`corners of the document[.]”); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d
`
`1376, 1383 (Fed. Cir. 2001)).
`
`
`
`13
`
`
`
`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
`
`
`
`2.
`
`Obviousness
`
`A patent claim is obvious under 35 U.S.C. § 103(a) only “if the differences
`
`between the claimed subject matter and the prior art are such that the subject
`
`matter as a whole would have been obvious at the time the invention was made to a
`
`person having ordinary skill in the art to which said subject matter pertains.”
`
`Dominion Dealer Solutions, LLC v. AutoAlert, Inc., Case IPR2013-00220, Paper 8,
`
`at 20 (P.T.A.B. Aug. 15, 2013) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`
`406 (2007)). “The analysis under 35 U.S.C. § 103(a) is objective and includes a
`
`determination of ‘the scope and content of the prior art,’ the ‘differences between
`
`the prior art and the claims at issue,’ and ‘the level of ordinary skill in the pertinent
`
`art.’” TRW Automotive US LLC v. Magna Elecs. Inc., Case IPR2014-00259, Paper
`
`19, at 10 (P.T.A.B. June 26, 2014) (quoting KSR Int’l Co., 550 U.S. at 406).
`
`“[R]ejections on obviousness grounds cannot be sustained by mere conclusory
`
`statements; instead, there must be some articulated reasoning with some rational
`
`underpinning to support the legal conclusion of obviousness.” Id. at 10-11
`
`(quoting KSR Int’l Co., 550 U.S. at 418).
`
`A showing of obviousness requires “an articulated reason with a rational
`
`underpinning to combine specific teachings in the references in a particular manner
`
`to arrive at the claimed invention[.]” Dominion Dealer Solutions, LLC v.
`
`
`
`14
`
`
`
`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
`
`
`AutoAlert, Inc., Case IPR2013-00223 (JL), Paper 9, at 19 (P.T.A.B. Aug. 15, 2013)
`
`(citing KSR Int’l Co., 550 U.S. at 418). “Arguing that references are analogous to
`
`the invention of the patent at issue or to each other is insufficient.” Id. Petitioners
`
`must offer “a sufficient explanation of how the references may be combined, from
`
`the perspective of one with ordinary skill in the art, to arrive at the claimed
`
`invention, and why the proffered combination accounts for all the features of each
`
`claim.” Id. Merely restating claim language as an alleged rationale to combine
`
`presents a circular rationale that “fails to provide a sufficient reason as to why one
`
`of ordinary skill in the art would have been prompted to combine the teachings of
`
`the references[.]” TRW Automotive US LLC, Case IPR2014-00259, Paper 19, at 14.
`
`“The existence of common elements found in both the challenged claims and
`
`the [relied upon references] does not establish that the challenged claims would
`
`have been obvious.” Kinetic Techs., Inc. v. Skyworks Solutions, Inc., Case
`
`IPR2014-00529, Paper 8, at 15 (P.T.A.B. Sept. 29, 2014). Petitioners must
`
`“explain why a person of ordinary skill in the art would have combined elements
`
`from specific references in the way the claimed invention does.” Id. (citing
`
`ActiveVideo Networks v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir.
`
`2012)).
`
`
`
`15
`
`
`
`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
`
`
`
`B. Atherton Does Not Anticipate Any of Claims 1-6 and 8 of the ‘337
`Patent.
`
`Independent claim 1 of the ‘337 Patent recites, inter alia, “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.” Ex. 1004,
`
`11:8-10. For at least the reasons identified below, Atherton does not disclose such
`
`an element.
`
` Petitioners assert that the action of folding the flexible tag of Atherton
`
`provides the claimed switching mechanism. “Atherton discloses a ‘switching
`
`mechanism,’ as recited in Claim 1, by virtue of folding the RFID tag along the
`
`‘fold line 101.’” Pet., 23:10-11. Figure 1A of Atherton illustrates the fold line 101
`
`for the flexible RFID tag 100:
`
`The proper construction of the term “switching mechanism” (see section III
`
`
`
`
`
`16
`
`
`
`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
`
`
`above) denotes a mechanical structure similar to a lever, knob, slider, rotatable
`
`member, or switch, rather than the act of folding a tag and/or a fold line. The
`
`specification discloses “the RFID tag 110 may comprise a slider mechanism 240
`
`…, where the RF module 220 is mechanically coupled to the slider 240.” Ex.
`
`1004, 7:38-40. The switching mechanism allows a user to “manually change the
`
`operational state of the RFID device by activation of a lever, switch, knob, slider,
`
`rotating member, or other similar structure.” Ex. 1004, 6:33-36. By manipulating
`
`the slider, a user “modifies the relative positions of the RF module 220 and the
`
`booster antenna 210.” Ex. 1004, 7:40-42.
`
`While the switching mechanism is operated by a user, the switching
`
`mechanism allows a user to “manually change the operational state of the RFID
`
`device by activation of a lever, switch, knob, slider, rotating member, or other
`
`similar structure.” Ex. 1004, 6:33-36. Thus, it is the physical structure, not the
`
`action of operating the physical structure that comprises the switching mechanism.
`
`Petitioners attempt to overcome the lack of a switching mechanism in
`
`Atherton by defining an operation of “folding the RFID tag along the ‘fold line
`
`101.’” Pet., 23:11. However, the word “switch” in any of its forms, or any
`
`description that can be taken for a switch is not disclosed anywhere in Atherton.
`
`Ex. 2002, ¶ 87. There is no mention within Atherton of a switching mechanism or
`
`
`
`17
`
`
`
`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
`
`
`description of the folding of the tag as a switching mechanism. Folding a tag is an
`
`action, not a physical mechanical structure that has discrete positions. Ex. 2002, ¶
`
`87. Atherton provides no suggestion that the use of a switching mechanism would
`
`solve the problems of providing a low-cost RFID tag for consumer goods and
`
`maintaining consumer privacy with respect to preventing surreptitious reading of
`
`an RFID tag on a purchased consumer good. Ex. 2002, ¶ 174.
`
`Further, the fold line 101 of Atherton is simply a generally transverse line
`
`that divides the tag into two regions. Ex. 1006, Abstract. The fold line of Atherton
`
`does not amount to a structure such as a lever, switch, knob, slider, or rotating
`
`member, nor is it similar to any of these structures. Ex. 2002, ¶ 171. Atherton
`
`discloses no such mechanism. Id. at ¶ 188. Accordingly, Atherton does not
`
`describe each and every element of claim 1 arranged or combined in the same way
`
`as recited in the claim, and does not anticipate claim 1.
`
`Claims 2-6 and 8 of the ‘337 Patent depend from claim 1. Ex. 1004, 11:11-
`
`12:15. For the reasons demonstrated with respect to claim 1, Atherton does not
`
`disclose all the features of independent claim 1 incorporated into dependent claims
`
`2-6 and 8. Therefore, Atherton does not anticipate claims 2-6 and 8. Ex. 2002,
`
`¶¶ 91-106.
`
`In addition, claim 8 further recites “an indicator adapted to visually indicate
`
`
`
`18
`
`
`
`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
`
`
`the status of the RFID device.” Ex. 1004, 12:13-15. Petitioners assert “Atherton
`
`discloses that the RFID tag is enabled by folding Region 1 over Region 2, and
`
`disabled by unfolding those regions so the tag is flat,” (Pet., 29:11-12) and further
`
`that the folded and unfolded states of the RFID tag are indicators that “visually
`
`indicate the status of the RFID device.” Id. at 29:19-20. Atherton, however,
`
`discloses that the “tag is arrangeable in a first configuration in which said
`
`integrated circuit and said antenna are operatively electrically coupled to provide
`
`an RFID function, and a second configuration in which electric coupling of said
`
`antenna and circuit is altered to change said function.” Ex. 1006, 2:17-20; Ex.
`
`2002, ¶¶ 85, 101. Thus, Atherton discloses “tag configurations” for enabling and
`
`disabling the tag, not “an indicator” of the tag state.
`
`Further, Atherton discloses that folding of the tag is at best an ambiguous
`
`indicator of whether the tag is enabled or disabled. Atherton states that “[g]enerally
`
`speaking, the efficiency of non-contact coupling methods diminishes rapidly as the
`
`distance between the coupled electrically conducting areas increases, so the RFID
`
`tag 100 does not need to be opened far before its RFID function is substantially
`
`diminished.” Ex. 1006, 5:28-31; Ex. 2002, ¶ 103. Further, it is not possible to
`
`determine if there is a partly folded tag, or if the antenna and the conducting trace
`
`are misaligned. Thus, there is no disclosure in Atherton to confirm the degree of
`
`
`
`19
`
`
`
`Patent Owner’s Preliminary Response in IPR No. IPR2016-01763
`
`
`coupling. Ex. 2002, ¶ 85. The folded/unfolded tag does not
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ ChargeStill Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site